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COPYRIGHT DEPOSIT. 


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PATENTS 

& 

TRADE MARKS, 



MUNN&CO. 

PATENT ATTORNEYS 


NEW YORK 

WASHINGTON CHICAGO 

SAN FRANCISCO LO$ ANGELES 


Copyright, 1924, by MUNN Si CO. » 





Copyright by B. G. Mitchell 

THE WOOLWORTH BUILDING 
HOME OF MUNN & CO. AND 
THE SCIENTIFIC AMERICAN 


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©C1A81514SO 



DEG 


9 1924 

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PART I 


X*\°Cb£ 


THE HISTORY OF MUNN & CO. 

F ROM its very inception the Scientific American has been 
closely identified with the American inventor, for as it was 
then the only scientific journal of the kind in this country, 
its offices soon became a meeting place for inventors. Even in the 
earliest days, its editors were consulted by many of those of its 
readers of inventive mind who needed advice, either practical 
or legal, and sought instruction regarding the commercial ex¬ 
ploitation of their creations, the obtaining of assistance in the 
development of their inventions, and lastly and most frequently, 
the safeguarding by patent protection of their contributions to the 
advancement of civilization. From this intimate relation sprang 
the necessity of creating a special department for inventors, a 
department to give advice on the patenting of inventions and 
on the patent law. 

From the beginning this department proved to be the most 
successful patent bureau ever established. It was with a full 
realization of the great service to inventors which could be rendered 
thereby, that the publishers of the Scientific American created 
it, and its successors today, in unbroken line and after three- 
quarters of a century of conscientious, enlightened service, are 
carrying on the work initiated almost contemporaneously with the 
establishment of the Scientific American, While to the average 
layman a patent, after an invention has been made, is something ob¬ 
tainable by purchase like any other commodity, the initiated under¬ 
stand that there are patents and patents, that a patent is more than a 
somewhat imposing-looking document with a handsome seal 
attached thereto, and that unless a patent application is formu¬ 
lated and prosecuted to issue with every care, skill, technical 
and legal knowledge and experience, the applicant’s creative con¬ 
tribution to the arts and sciences may very possibly fail to 
receive even a measure of the safeguard to which it. is entitled. 
This has been and is today the keynote of the practice of 
Munn & Co.—securing for the inventor at any cost of time and 
labor that full meed of protection which his advancement in the 
art warrants, and at as moderate an expense to him as possible. 
For seventy-eight years that has been the policy of Munn & Co., 
and it is with a feeling of honest and withal modest pride that 

[i] 


2 


Patents 


they therefore lay claim to a position as a real servant of the 
public. 

It can be said truthfully that there is no field of human en¬ 
deavor, no phase of applied knowledge, which the practice of 
Munn & Co. has not touched. The thousands of inventors who 
have sought their services in the securing of patent protection, 
have striven to create improvement in practically every known 
art and science, and each has contributed his share, whatever it 
may have been, to the establishment of what is today the acknowl¬ 
edged fact, that three-quarters of the industrial wealth of the 
United States is based directly or indirectly on patent rights. 
An historical chronicle of Munn & Co. would be in a great 
measure a recital of the story of the American inventor, and 
would be a fascinating account involving many of the great 
figures of modern invention. 

SERVICE 

I N recent times there has come a clear comprehension both 
to the business man and to the professional man, that he sells 
to the one who purchases from him, be it merchandise, ex¬ 
perience or specialized knowledge, not only that particular vendible 
commodity, but something more, an intangible something which 
for want of a better term is designated as “service.” And modern 
methods and modern efficiency have demonstrated that the success 
of a commercial or professional enterprise can be measured 
exactly in the degree that “service” is rendered. For decades 
past Munn & Co. have realized this principle thoroughly, and 
it has been the firm’s constant endeavor not only to perform for 
its clients the professional work called for, but in addition, to 
render to the fullest possible extent that “service,” without which 
complete satisfaction cannot be attained. 

“Service” means care, thoroughness and attention; it means 
courtesy and unremitting effort. Service stands for placing the 
client’s best interests first under all conditions, for giving him 
full value and more for the fees he pays, for building up good 
will that can be created in no other manner. In this sense 
Munn & Co. render “service” to their clients, and in this spirit 
the firm has conducted its work during three-quarters of a century 
and more. And in carrying out this policy we have at all times 
tried to make our reilationship to our clients as personal a one 
as possible. The members of our staff are selected not only with 
their professional qualifications in view, but also with close regard 
to the characteristics of personality. Our staff is composed of 
men experienced in the mechanical, electrical and chemical fields, 
thoroughly equipped by training and experience to prepare and 
prosecute all patent applications, irrespective of the complex nature 
of the subject matter involved or of the specialized, technical, or 
scientific knowledge required. Therefore, we feel that we are in 




Patents 


3 


a position to advise our clients as to the best and most compre¬ 
hensive method for the protection of their various forms of Com¬ 
mercial Property, and we are particularly equipped to serve 
them relative to the different forms of procedure necessary for 
such protection falling within the scope of the Federal Statutes. 
Commercial property, broadly speaking, and in the sense in which 
we have used the term, comprehends any intangible property upon 
which an action may be maintained for the enforcement of rights 
thereunder. We also have associates throughout the world who 
assist in the prosecution of Patent and Trade-Mark applications 
in all foreign countries. 

Should an inventor not have the time to read this booklet, or if 
the circumstances attending his case are such that the following 
pages do not give him the special information which he desires, 
in such case it is only necessary for him to write to us and 
describe his invention. Upon receipt of this information, we 
will immediately and fully reply to him, explaining just what 
steps should be taken for the proper protection of his interests, 
and advising him regarding his particular invention. 

SECURITY 

I NQUIRY is often made of us by new or prospective clients 
as to what security they have that their communications to 
Munn & Co. will be faithfully guarded and will remain 
confidential. Our answer to all such questions is that the client 
has no security other than our established integrity, based upon 
a most extensive practice before the Patent Office, of more 
than seventy-seven years. Our clients are numbered by the hun¬ 
dreds of thousands, and are to be found in every town and city 
of the United States. Such a thing as the betrayal of a client’s 
interest never has occurred in our generations of practice, and 
is not likely to occur. Satisfactory information as to our repu¬ 
tation and standing can be ascertained from any bank or large 
business house in your own neighborhood. 


WHAT IS A PATENT? 


A PATENT is a franchise. It is a contract between the 
patentee and the United States Government, under the terms 
of which the Government grants to the patentee an exclu¬ 
sive monopoly of the subject-matter invented, and covered by the 
patent, for a term of seventeen years. The consideration for this 
grant to the patentee is the making public of the invention by him, 
so that at the end of the seventeen-year period of monopoly the 
invention becomes public property and can be utilized by all. The 
underlying purpose of our patent laws is to induce inventors to 
make public their improvements in any “new and useful art, 



4 


Patents 


machine, manufacture or composition of matter,” and thereby to 
prevent these inventions from being kept secret by the originators, 
in the endeavor to profit thereby. A patent is a purely artificial, 
statutory creation. No inventor has any personal exclusive right 
in his invention, at common law. Patents are property, and the 
owner of a patent is both legally and equitably entitled to the 
same protection for that property that the owner of any other 
kind of property may.enjoy. 

The patent itself must embody a disclosure of the invention 
sufficiently full and complete to enable “one skilled in the art” to 
understand the invention thoroughly and to be able to reproduce 
or utilize it. “One skilled in the art” is an imaginary personality, 
and really means nothing more than one capable of comprehending 
the particular invention of the patent. The disclosure in the 
patent usually consists of .a drawing and a specification respectively 
depicting and describing the invention. In certain cases, drawings 
are not necessary, and a verbal disclosure alone is sufficient, for 
example, where the invention consists of a composition of matter. 
The particular improvement or advance in the art, which is cov¬ 
ered by the patent, is set forth in one or more claims appended 
to the specification. These claims constitute the compliance with 
the statutory requirement that the applicant “shall particularly 
point out .and distinctly claim the part, improvement, or combi¬ 
nation which he claims as his invention.” A patent claim is prob¬ 
ably one of the most difficult and important expressions formu¬ 
lated in the English language. It must be terse and succinct, it 
must set forth the invention and no more in order that the patent 
may not be unnecessarily limited, it must be clear and complete, 
and it must not be vague or indefinite. Only long experience, and 
the skill of the patent solicitor, make possible the drafting of 
patent claims which will meet all of these requirements. 

The patent application includes in addition to the drawing, the 
specification and the claims, a petition and an oath. In some 
cases, though rarely now, a model is also filed with the papers. 
The petition is a communication signed by the applicant, and 
addressed to the Commissioner of Patents, requesting the grant 
of a patent for the invention described in the application. In 
the name of the inventor alone, if he is alive and mentally com¬ 
petent, may the application be filed. The oath is a sworn state¬ 
ment by the applicant, to the effect that he verily believes himself 
to be the first inventor of the invention for which he solicits a 
patent. It should be remembered that a patent may actually show 
a great deal more than it covers, for the additional unpatentable 
disclosure may be necessary in order that the particular or specific 
improvement, in its operation or its relation to the other elements, 
may be clearly comprehended. The claims define the invention,- 
notwithstanding that in order to interpret them, reference may be 
had to the specification, or even to the prior patent art. 

‘‘The right of property zvhich an inventor has in his invention 
is excelled, in point of dignity, by no other property right whatever. 



Patents 


5 


It is equalled, in point of dignity, only by the rights which authors 
have in their copyrighted books. The inventor is not the pam¬ 
pered favorite or beneficiary of the government, or of the nation. 
The benefits which he confers are greater than . those which he 
receives. He does not cringe at the feet of power, nor secure 
from authority an unbought privilege. He walks everywhere 
erect, and scatters abroad the knowledge which he created. He 
confers upon mankind a new means of lessening toil, or of in¬ 
creasing comfort; and what he gives cannot be destroyed by use, 
nor lost by misfortune. It is henceforth an indestructible heritage 
of posterity. On the other hand, he receives from the government 
nothing which cost the government or the people a dollar or a 
sacrifice. He receives nothing but a contract, which provides that 
for a limited time he may exclusively enjoy his own. Compared 
zvith those who acquire property by devise or inheritance; com¬ 
pared with those who acquire by gift or marriage; compared with 
those who acquire by profits on sales, or by interest on money, 
the man who acquires property in inventions, by creating things 
unknown before, occupies a position of superior dignity. Even 
the man who creates value by manual labor, though he rises in 
dignity above the heir, the donee, the merchant, and the money¬ 
lender, falls in dignity below the author and the inventor. Side 
by side stand the inventor and the author. Their labor is the most 
dignified and the most honorable of all labor; and the resulting 
property is most perfectly theirs.” —Walker on Patents, section 

152. 

TERM OF PATENT 


U NITED STATES patents are granted for a term of seven¬ 
teen years and cannot be renewed or extended except by 
special act of Congress, which is almost impossible to 
accomplish, and which has not been done for generations. Patents 
remain effective unless judicially invalidated, whether the inven¬ 
tion is commercially exploited or not. There are no additional 
taxes or payments required beyond the original cost of securing 
the patent. 

PATENTABILITY OF INVENTIONS 

M ANY people, both men and women, are, without knowing 
the fact, potential inventors, and many useful and what 
would be profitable inventions are lost to the originators 
because they do not appreciate that which is of commercial value, 
nor realize that they may have devised patentable inventions. 
As a matter of fact, invention is almost universal, nearly everyone 
having the talent in a greater or lesser degree. It will, therefore, 
be of interest to the reader to consider well any improvements 
which he may have conceived and may regard as unimportant, in 
order to determine whether he is not in possession of a patentable 



6 


Patents 


invention from the commercial exploitation of which he may even¬ 
tually realize handsome returns. 

It should be understood that we do not make Preliminary 
Examinations of the prior art without charge. This service, 
as is more fully explained on page 12, requires the time and 
attention of a skilled and experienced searcher, and it is necessary 
for us to charge a nominal fee of $5 in simple cases, for making 
the investigation. If we find from a study of the descriptive data 
submitted to us that a special “Preliminary Examination” is de¬ 
sirable in order to determine whether there are patentable differ¬ 
ences between an invention of our client and the existing art, we 
so inform him. 

Those wishing to consult us in regard to obtaining patents 
are cordially invited to do so. We are always happy to see our 
clients in person at our offices or to advise them by letter. In all 
cases a careful consideration of their inventions, an honest opinion, 
and a prompt reply may be expected. If a client’s occupation or 
engagements are such that it is absolutely impossible for him to 
call at our offices during the regular business hours, arrangements 
can be made by correspondence for an interview at some other 
time. It will be appreciated, however, that this can be done in 
exceptional cases only. Our office hours are from 9 A.M. to 
5 P.M. every week day except Saturday, and on that day the 
hours are from 9 A.M. to 1 P.M. 

HOW TO APPLY FOR A PATENT 

I N order to apply for a patent we need such data as will enable 
us thoroughly to understand the invention, the form and 
arrangement of the parts, their mode of operation, and the 
special advantages of the new features. If the invention is a 
process or method, or a composition of matter, the information 
to be submitted must likewise be of such character that all the 
steps of the process, their order and relation, and the results 
accomplished are clear, and, in the case of a composition of 
matter, that all the ingredients, their proportions, etc., can be 
thoroughly comprehended. It is sufficient if the invention is sub¬ 
stantially complete in its main features and theoretically operative; 
the exact form of the minor mechanical details need not be worked 
out. We always recommend, for safety, the prompt filing of an 
application pending the perfecting of the invention; another appli¬ 
cation may be filed in due course for the perfected invention. 
Either a model of any convenient size and material, sketches, 
drawings or photographs will answer, provided they illustrate 
the invention. Upon receipt of such data, together with instruc¬ 
tions to proceed, we shall prepare the official drawings and speci¬ 
fications, formulate the proper claims, and prepare the legal forms 
to be signed and sworn to. 

"When inventors are unable to send a model or sketches we can 



Patents 


7 


make arrangements to have an expert draftsman visit the inventor. 
The expense of this special service will be stated upon request. 

COST 

O UR charge for professional services for an application is 
determined by the amount of work involved in the prepara¬ 
tion of the official drawings, specification and claims, and 
the prosecution of the application to a final determination before 
the Primary Examiner. Upon receipt of either a model or 
sketches and description of an invention we shall be glad to advise 
just what expense will be involved to the inventor in making the 
application. We aim to make the costs as moderate as possible 
consistent with competent and conscientious service and with every 
effort to secure complete protection for the patentable features of 
the invention. 

It is our custom to make one charge which covers not only the 
preparation of the application but also the full cost of the prose¬ 
cution of the same before the Primary Examiner. While this 
seems to be the best practice, as it enables the inventor to ascer¬ 
tain in advance just what the expense will be to him, some of 
our clients prefer to have us make a charge for the preparation 
of the application and to make additional charges from time to 
time for amendments and for other services rendered during the 
prosecution of the case. When the inventor desires us to arrange 
our fees in this way, we shall be pleased to accommodate him. 

To our charge for professional services should be added the 
first Government fee of $20, payable upon the filing of the appli¬ 
cation and the final Government fee of. $20, payable any time 
within six months after the application is allowed, to issue the 
patent. 

INSTRUCTIONS FROM THE CLIENT 

I N order that we may proceed with an application for a patent, 
we should receive the necessary information, as outlined on 
page 6, together with a remittance of $40 on account. This 
payment is in the nature of a retaining fee and covers the first 
costs in a simple case. Upon the receipt of the information and 
the retaining fee, we can immediately prepare the necessary appli¬ 
cation papers and drawings and send the same.to the inventor for 
examination and execution. The full name, citizenship, residence 
and Post-Office address of the inventor should be given in each 
case. The inventor o nly can apply for a patent under the United 
States patent laws. 

When the papers are returned to us duly signed and ready to 
be filed in the Patent Office the next payment, completing our . 
charge for professional services and the first Government fee, is 
due. For directions as to the sending of drawings, models, and 
remittance, see page 8. 









8 


Patents 


MODELS AND SKETCHES 

HE Patent Office does not require models to be furnished 
when applications are filed, but if they are needed, as in 



exceptional cases, they will be called for and the inventor 
duly notified. It is, however, often desirable to have models of a 
convenient size submitted to us in order that we may be in a posi¬ 
tion to make proper drawings. We find that as a general rule a 
model is more satisfactory to work from than sketches; but we 
do not advise our clients to go to any great expense in the matter, 
as a sketch will answer equally well, provided it enables us to 
understand the form, arrangement and operation of the various 
details of the invention. 

It is advisable to include with the sketches or photographs of the 
different parts of the invention a sketch showing the entire ap¬ 
paratus as set up ready for use. A brief description should ac¬ 
company the model or the sketches, referring to each part by a 
separate letter or number. If desired, all models will be returned 
as soon as the necessary drawings are complete. 

Small models can be sent by Parcel Post, but should be care¬ 
fully packed and the name of the inventor should appear upon 
the wrapper. Larger models should always be sent by express, 
prepaid, and no writing or money should be placed in the box. 
Sketches, Post Office orders or express money orders should be 
sent to us by mail at either Woolworth Bldg., 233 Broadway, 
N. Y. City, or 625 F St., Washington, D. C., 801 Tower Bldg., 
Chicago, Ill., Hobart Bldg., San Francisco, Calif., or Van Nuys 
Building, Los Angeles, Calif., depending upon which office you 
wish to handle your case. 


RECORD OF INVENTION 


I T sometimes happens that an inventor lacks the financial means 
necessary to file an application for a patent, or has not re¬ 
duced his invention to such a state of completion that he wishes 
to apply for a patent. It is on that account that we have estab¬ 
lished a filing system, wherein inventions of our clients may be 
recorded and filed until such time as they are ready to proceed 
with their applications. Therefore, should an inventor desire to 
avail himself of our facilities in this respect, he should send us 
a sketch and a full description of his invention, signed, dated 
and witnessed. These disclosures we will carefully date and mark 
for identification, and file in our secret archives, where they will 
be held in the strictest confidence until we receive instructions 
from the inventor either to destroy the same, or to prepare the 
necessary application papers. The expediency of keeping, for 
record, signed and dated disclosures cannot be too strongly urged, 
as such data are of the greatest importance should a contest ever 
arise involving the date of conception of the invention. There 



Patents 


9 



For many years we have had an office at 625 F Street, Wash¬ 
ington, D. C., and in addition we have, for the convenience of 
our clients, opened offices at 801 Tower Building, Chicago, Ill., 
the Hobart Building, 582 Market Street, San Francisco, Calif., 
and 510 Van Nuys Building, Los Angeles, Calif. 

Business directed to any one of the offices will receive the best 
professional attention. 





10 


Patents 


is absolutely no charge for this service, and the inventor is at 
liberty to avail himself of this offer at any time. 


WHO MAY APPLY 


C ITIZENS, foreigners, women, minors, executors or admin¬ 
istrators of the estates of deceased inventors, and the 
guardians of insane inventors may obtain Letters Patent of 
the United States. 


FOREIGN INVENTORS 


F OREIGN inventors and citizens of the United States, who 
file a patent application in a foreign country, have one year 
from the date of the filing of the application abroad in which 
to file an application for the United States patent. Where a 
design is to be protected, the United States application should be 
filed within four months of the filing of the first foreign appli¬ 
cation. 

JOINT APPLICATIONS 


T WO or more persons may apply jointly for a patent, pro¬ 
vided they are in reality the joint inventors of the subject 
matter thereof. If, however, one person alone is the in¬ 
ventor and the other merely a partner or financial associate, the 
patent must be applied for in the name of the inventor alone. 
However, the latter may secure rights to his partner in advance 
by executing a deed of assignment so drawn that the patent will 
issue in both names. A patent issued as a result of such an un¬ 
conditional assignment has exactly the same force and effect as 
if it were granted to the parties as joint inventors. 

It is of the GREATEST IMPORTANCE that the true rela¬ 
tion of joint applicants should be thoroughly understood by the 
solicitor in order that he may prepare the papers so as properly to 
protect the interests of both parties. We wish to impress upon 
the reader as emphatically as possible that if a patent is issued to 
two or more individuals as joint inventors and one or more of these 
joint parties actually did not participate in the invention, the result¬ 
ing patent is absolutely invalid and ineffective. If both applicants 
are true inventors they should both sign the papers, but if they 
are joint owners merely and one is the inventor, the latter alone 
should execute the application papers and should assign the proper 
interest to the other party. The question of joint invention and 
joint application is also of the very highest significance in con¬ 
nection with interference proceedings, and on more than one occa¬ 
sion a valid claim of priority of invention has been nullified 
through a mistake in filing a joint application when a single appli¬ 
cation should have been made. REMEMBER, ALWAYS RE¬ 
LATE TO THE PATENT SOLICITOR IN COMPLETE 
DETAIL THE CIRCUMSTANCES ATTENDING AN AL- 




Patents 


11 


LEGED JOINT INVENTION IN ORDER THAT HE MAY 
DETERMINE THE PROPER COURSE TO PURSUE. 

ASSIGNMENTS 

W HEN an inventor has not the means to procure a patent, 
he can usually find a partner among his friends or the 
business men in his neighborhood, who will advance the 
necessary fees. In consideration of the payment of such fees it 
is usual to give a part interest in the patent, and an assignment 
covering such interest can be prepared and filed in the Patent 
Office, with the application papers. In that case, the patent will 
then issue to both parties jointly. The law allows an inventor 
to sell and assign his invention, either before he has applied for 
the patent, or after the same has been applied for, or after the 
patent has issued. He may sell or assign any portion, such as 
one-fifth or one-half interest, or the right or the rights to any 
towrn, county or state. If assigned before the patent is granted, 
the purchaser will enjoy his rights under the patent whenever it 
is issued. 

When an undivided interest in a patent is assigned without 
any restriction or condition, the assignee, however small his in¬ 
terest, may proceed to manufacture and sell the patented articles, 
without giving any accounting, or dividing any of the profits with 
the other owner or owners of the patent. It is also possible for 
such an assignee to sell and assign a portion of his interest in a 
patent, with the result that the second assignee may manufacture 
and sell, as well as the assignee to wffiom the inventor transferred 
his interest. However, the assignment may include conditions 
which will obviate the above-stated possibilities. In fact, the 
assignment may contain clauses to the effect that neither party 
shall have the right to affect his interest in any way whatsoever, 
except with the written consent of the other party, and, further¬ 
more, that the invention and the patent to be granted and issued 
thereon, are to be exploited jointly by the parties and for their 
mutual and joint interest, and that any profits accruing are to 
be divided share and share alike, or otherwise, as may be desired. 
It is always necessary, for the proper preparation of deeds of 
assignment and similar instruments, that the attorney be advised 
as to the exact conditions which the parties have agreed upon, 
and any other particulars of interests in the premises. 

A deed of assignment of a patent, or a part interest in a patent, 
should be recorded in the Patent Office at Washington, within 
ninety days of its execution. Those who desire to have deeds of 
assignment prepared and recorded should state the full names and 
residences of the parties, the interest to be conveyed, the title of 
the invention, and, if already patented, the date of the patent; also 
$5 should be remitted to cover the charge for professional service 



12 


Patents 


in preparing simple deeds of assignment. This amount includes 
the official recording fee. 

PRELIMINARY EXAMINATION 

A PRELIMINARY examination is a special search made by 
us in the Patent Office at Washington, among existing 
United States patents only, covering inventions of the same 
kind as that of our client, to determine whether any patent has 
been issued which would preclude our client from securing the 
grant of a patent on his invention. On completing the examination, 
we prepare a report stating what patents have been found, which 
most closely resemble the invention submitted, and we forward to 
our client copies of these patents, together with our opinion as 
to the probability of procuring a patent. Our charge for making 
a preliminary examination is usually $5; this includes copies of 
any patents which we may cite. If the report is unfavorable, the 
applicant will thus be saved any further expense. 

The number of patents issued in the United States is so great, 
that for the small fee charged for our examination it is impossible 
to guarantee infallibility in making the search, for there are con¬ 
tingencies against which the most careful searcher cannot guard. 
It has always been our policy to be conservative in our advice to 
clients, and to show the inventor, before he proceeds to apply for 
a patent, the obstacles that he will have to contend with, rather 
than to urge him to proceed with a case which seems to possess 
little novelty. 

In making preliminary examinations, we endeavor to proceed 
with all possible thoroughness, without making an extra charge, 
even when we are examining classes of inventions that involve 
special difficulties, such as the nature of the subjects or the large 
number of patents already granted; but in some cases, to make 
an exhaustive search of the entire art would cost far more than 
the actual application for patent. 

All our examinations are made by persons who have had years 
of experience in conducting searches of this nature, and who are 
entirely familiar with the state of the art in question. 

The fee paid for a preliminary examination is not applied toward 
the cost of the patent. It is desirable for the inventor, when 
writing to us relative to his invention, to state clearly whether 
or not he wishes the examination made. It should be borne in 
mind that these searches do not extend to foreign patents, nor to 
pending applications, the latter being secret and not open to public 
inspection. 

For the purpose of a preliminary examination, our client should 
furnish us with a sketch and a full and complete description of 
his invention, together with a remittance of $5 to cover the cost 
of the examination. 



Patents 


i 13 


COMPOUNDS 

N EW chemical and other compositions, such as paints, wall 
plasters, artificial stone, new pavements, roofing materials, 
fire-proofing and water-proofing substances, and the like, 
may be patented if new and if they involve invention. A full 
statement must be given of the ingredients, with the proportions 
of each, and the manner of mixing and otherwise preparing the 
composition. Medicinal compositions now are rarely held to be 
patentable, and frequently the best way to protect such com¬ 
positions is to adopt a distinctive trade-mark and keep the in¬ 
gredients secret. We shall be glad to advise regarding this. 

DESIGN PATENTS 

W HILE we have already stated that the underlying pur¬ 
poses of the patent laws are designed to offer inducements 
to inventors to disclose their improvements in any new 
and useful art, machine manufacture or composition of matter, 
such laws are further designed to promote the production of new, 
original and ornamental surface ornamentation or shape for an 
article of manufacture, any pleasing presentation of a utilitarian 
article in such manner that it is rendered more saleable or ac¬ 
ceptable to the purchasing public; as for instance, there are 
numerous forms of sewing machines or typewriters on the mar¬ 
ket, the mechanical features of which have been protected by 
Letters Patent, but the mere design of an ornamental frame cannot 
be protected under the ordinary form of mechanical patent, but 
can be protected under the Design Patent Act as a new, original 
and ornamental presentation of an article of manufacture, and 
such ornamentation of the parts tends to increase the sale of the 
article, as it is more pleasing to the eye, such enhancing . or 
beautifying elements forming proper subject-matter for design 
patent and rendering the complete article capable of complete 
protection. In other words, a design patent permits the intro¬ 
duction of beauty and grace into the utilitarian form of any ordinary 
commodity, be it a machine or an article of manufacture. 

Design patents are more particularly granted for any new, 
original and ornamental figure, shape or pattern, for prints or 
fabrics of any kind to be woven, printed, cast, or otherwise placed 
on or worked into any article of manufacture; also for any new 
bust, statue, alto-relievo, or bas-relief. The. object of the design 
patent law is to afford protection for articles, of manufacture 
having an esthetic or artistic value. . If the design is deemed to 
be a work of the fine arts, however, it will be necessary to secure 
protection by a copyright and not by a. design patent. We shall 
be happy to give our opinion as to which form of protection is 
desirable or essential. The scope of the design patent law is very 
broad in respect to the protection which it is possible to obtain 



14 


Patents 


for artistic designs for articles of manufacture. In a number 
of instances large business interests have been built up with a 
design patent or patents for a basis. This is in a great measure 
due to the very liberal laws now in force against the infringers 
of this class of patents. Where a foreign application for pro¬ 
tection for a design has been filed, the United States application 
should be filed within four months of the filing abroad. 

Design patents are issued for three different periods; the cost 
of an application on a simple design for a 3*4 year patent is 
$40.00; for a 7 year patent, $45.00; and for a 14 year patent, 
$60.00 These fees include our charge for professional services 
as well as the Government fees. It is customary to present an 
application for the shortest term, and after it has been favorably 
considered, but before the actual date of allowance, an extension 
can be made to either one of the longer terms upon the payment 
of the additional Government fee for the corresponding term, 
which for 7 years would be $5.00 and for 14 years $20.00 addi¬ 
tional. 

FILED APPLICATIONS 

AS soon as the application is filed in the Patent Office, the 
inventor is protected against the grant, without his knowl¬ 
edge and an opportunity to contest the question of priority, 
of a patent for the same invention to another person. The official 
receipt issued by the Patent Office will be sent to the inventor 
directly after the case is filed. 

When an application is filed, it receives, in its due turn, an 
official examination. As a result of this examination the Patent 
Office Examiner in charge makes such objections and cites such 
references to prior patents as he may think proper. These refer¬ 
ences are carefully examined by us, and after thorough considera¬ 
tion we use our best endeavors, by written and, if necessary, oral 
argument, to overcome or avoid the objections raised by the 
Examiner, and procure the allowance of the application. If de¬ 
sired, the applicant’s answer to an official action may be delayed 
for a period of one year. On the second hearing before the 
Examiner, new objections and new references are often cited, 
and further time and labor are then required on our part; and so 
on perhaps for a third or fourth hearing. It will thus be seen 
that the work of prosecuting the case, while before the Patent 
Office Examiner, is frequently very arduous and involves much 
time and labor; but the cost of the prosecution is included in our 
charge for professional services already mentioned. We spare 
no pains at any stage of the prosecution of an application in 
our effort fully to protect all the novel features of our client’s 
invention and to safeguard his interests to the fullest possible 
extent. 

When the Patent Office has decided to grant a patent, we send 
a notice to our client stating that the application has been “allowed,” 



Patents 


15 


and that the patent will be printed and issued about four w^eks 
after the payment of the final Government fee of $20, to which 
reference has already been made. 

The applicant may pay this at once and have the patent issued 
without delay, or he may wait six months before making the 
payment. During this period the American inventor has an oppor¬ 
tunity to file foreign applications before the United States patent 
issues, should he have failed to file the corresponding foreign 
applications within one year from the date of filing in the United 
States. 

REJECTED AND DEFECTIVE CASES 

W E give prompt attention to the prosecution of cases that 
have been filed by the applicants themselves or by other 
attorneys and have been rejected by the Patent Office, or 
which, through improper preparation or the failure to present 
proper legal and technical arguments, have been delayed. Our 
charges for services in connection with such work are moderate, 
and we shall be pleased to quote the same upon request. 

It should be borne in mind by the inventor that no additions 
or material changes can be made in an application after the same 
has been filed in the Patent Office. Therefore, the applicant should 
be careful that the solicitor has complete data relating to the in¬ 
vention at hand, so that he may include in the original disclosure 
of the specification and claims all the essential details of the in¬ 
vention. 

RENEWAL OF LAPSED CASES 

W HERE an application has been officially allowed and the 
inventor has failed to pay the final fee within the six 
months permitted by law, so that his patent may issue, 
the application will be deemed to have lapsed. In order to revive 
the case, it will be necessary to renew the application. Should 
the inventor desire to renew his application, the first Government 
fee of $20 will have to be paid over again, while our charge for 
services rendered in connection with the renewal of the applica¬ 
tion is nominal and does not usually exceed $20 where no addi¬ 
tional prosecution is involved. It should be borne in mind that 
a lapsed application must be renewed within two years after date 
of allowance. 

APPEALS 

I N the prosecution of an application before the Patent Office, it 
is often necessary to amend or redraft the claims a number of 
times, to present arguments setting forth the novel points of 
the invention, and to state our reasons why the case should be 
allowed. For such prosecution as already mentioned, we make no 




16 


Patents 


extra cnarge, as this expense has been included in the original 
fee for professional services. If, however, the case is finally 
rejected by the Primary Examiner, and the patent refused, the 
applicant may appeal from the decision of the Examiner, as fol¬ 
lows : First, to the Board of Examiners-in-Chief; secondly, to 
the Commissioner of Patents; thirdly, to the Court of Appeals of 
the District of Columbia. 

First Appeal.—The Government fee, payable by the applicant 
on making an appeal to the Examiners-in-Chief, is $10. Our 
charge for services in preparing and conducting this appeal is 
moderate and often in part contingent upon success. 

Second Appeal.—From the decision of the Examiners-in-Chief 
an appeal may be taken to the Commissioner of Patents. The 
Government fee is $20, and our fee is dependent upon the nature 
of the case and the difficulties involved. 

Third Appeal.—From the decision of the Commissioner of 
Patents an appeal may be taken to the Court of Appeals of the 
District of Columbia. In this instance, too, the fees depend upon 
the circumstances of the case. 

We exhaust, without extra charge, every argument during the 
prosecution of the case before the Primary Examiner, but if the 
claims are finally rejected, we do not urge our client to go to the 
expense of an appeal, unless in our judgment the chances of suc¬ 
cess are favorable. 

INTERFERENCES 

A N Interference is a contest or quasi-judicial proceeding insti¬ 
tuted by the Patent Office for the purpose of determining 
the question of priority or originality between two or more 
inventors claiming substantially the same patentable invention, or 
between two or mor parties claiming the same or conflicting 
Trade-Marks for the same class of merchandise. 

The proceedings in an Interference are wholly apart from the 
ordinary proceedings to determine patentability, and, in fact, an 
Interference is not declared until the question of the patentability 
of the invention has been affirmatively decided. The procedure in 
Interference cases follows closely the practice of the United States 
Courts in Equity Proceedings. Priority is usually awarded to 
the one who first conceived the invention, providing he was dili¬ 
gent in completing the same and reducing it to practice. Actual 
reduction to practice consists of the construction of a full sized 
and operative device or apparatus. But as the filing of an allow¬ 
able application is, under the law, a constructive reduction to 
practice, the filing of an application should not be unnecessarily 
delayed. 

The preliminary steps required in an Interference are ordi¬ 
narily not very expensive. But when a case is subsequently vig¬ 
orously contested by the parties the cost is necessarily material. 
We attend to Interference proceedings before the Patent Office. 




Patents 


17 


and when necessary take testimony in all parts of the United 
States. 

If an application is rejected upon a patent issued within the 
two years preceding the date on which the rejected application 
was filed, and the applicant incorporates in his specification one 
or more claims similar to the claims contained in the issued patent, 
and contends that he made the invention before the filing of the 
application on which the issued patent was granted, an Interference 
will be declared. In such a case the latter applicant may prevail, 
but his case must be proven beyond a reasonable doubt. In 
such an event a patent will issue to the later applicant containing 
claims which may dominate those of the already issued patent. 
The latter patent cannot be cancelled by the Commissioner, but 
as the patentee has not prevailed in the Interference proceedings, 
he is not the true inventor of the subject matter of the claims 
in controversy, and his patent as to those claims is of no value 
or effect. ' 

Interferences occur most frequently, however, between two 
or more applications pending concurrently in the Patent Office. 
As a general rule the patent is awarded to the applicant who 
proves priority of invention. This is not always the case, how¬ 
ever, and other important factors come into play which often 
determine the result of the proceedings. These include for exam¬ 
ple the diligence of the inventor in supplementing the inventive 
act by reducing the invention to practice, that is, by producing 
a physical, operative embodiment of the invention, or the diligence 
of the inventor in filing his application for Letters Patent after 
he has created the invention or has reduced it to practice. If no 
reduction to practice has been made, the filing of the application 
itself is regarded as a constructive reduction which has the same 
effect as an actual one. In view of these and other circumstances, 
it is not always the one who first files his application who suc¬ 
ceeds in the Interference proceeding, and frequently the junior 
party, or later applicant, has the patent awarded to him. How¬ 
ever, the burden rests upon the junior applicant to come forward 
first with his proofs of conception of the invention, disclosure to 
others, reduction to practice, etc., and for this reason alone it is 
advisable to delay the filing of the application as little as pos¬ 
sible. In addition, the priority of filing is a very important factor 
in deciding the Interference, regardless of any other considerations. 

We take this opportunity of urging upon all our clients the 
great necessity of preserving original sketches and data of their 
inventions, and the names and dates of friends or acquaintances to 
whom the inventions were shown or explained. Such disclosures 
are valuable as evidence to show priority of invention and re¬ 
duction to practice, and will be of inestimable service should In¬ 
terference proceedings ever occur. 




18 


Patents 


RE-ISSUE OF PATENTS 


I N a case where a patent has been issued, which contains a 
material or invalidating error in the specification, or in the 
wording of the claims, or in the drawings, such error, pro¬ 
vided it has arisen through inadvertence, accident, or mistake, may 
be corrected by the surrender of the original patent, with a request 
for a re-issue, and a suitable oath supporting the application. Such 
a request must be made within a reasonable time after the grant 
of the patent, preferably within two years, and the expense at¬ 
tached will depend on the nature of the case. Under recent deci¬ 
sions no patent will be re-issued after more than two years have 
elapsed unless the circumstances are exceptional. 


COPIES OF PATENTS 


E can furnish a printed copy of the specification and draw 



ings of any patent granted since July, 1861, at a cost of 


15 cents to our client, provided the name and exact date, 
or the number of the patent is given with the order. When neither 
the date nor the number of the patent is known, but the patentee’s 
name only is given, we can, if desired, make an examination to 
locate patents granted in that name. The charge for this service 
is usually from $2 to $3. 

When neither the date, the number of the patent, nor the name 
of the patentee can be furnished to us, it is necessary to make a 
regular search in the records of the Patent Office, for which 
service our charge usually amounts to $5, if the device is not com¬ 
plicated. When, however, complicated mechanisms are presented 
an increase in our charge is necessary. 

Searches made from a sample, cut or sketch of an alleged pat¬ 
ented device cannot be guaranteed. At times the official port¬ 
folios are incomplete and in some cases the searcher has no means 
of ascertaining in what sub-class the patent is classified by the 
Patent Office. 

A WORD TO LAWYERS 

M ANY members of the Bar are not aware that we make a 
specialty of attending to patent cases which may arise in 
their offices and which necessitate the services of a solicitor 
familiar with the peculiarities of the practice of the Patent Office. 
If the attorney so desires, we will prepare the necessary applica¬ 
tion papers and official drawings, and prosecute the application, 
either in the name of the attorney, if registered to practice before 
the Patent Office, and under his direction as an associate, or in 
our own name. Furthermore, we are in a position to attend to 
the prosecution of applications that have been filed by attorneys, 
and which have been rejected by the Patent Office because of tech¬ 
nical irregularities or defects. 





Patents 


19 


Cases placed in our hands receive conscientious attention and 
are strictly confidential. Attorneys having- patent or trade-mark 
litigation who desire assistance in connection with the conduct of 
these cases, are referred to p. 24, where the subject of infringe¬ 
ment and opinions is treated. 


GOING TO WASHINGTON 


M ANY inventors believe that if they personally present them¬ 
selves before the Patent Office at Washington, they can 
have their cases passed upon more expeditiously, or com¬ 
mand other important facilities. This, however, is not so, and 
the journey to Washington is usually a mere waste of time and 
money. If, however, an inventor prefers to go to Washington 
in person, this booklet will serve as an introduction at our office 
there, where he will receive every attention and courtesy. 


CANADIAN PATENTS 

T HE patent laws of Canada are modeled after those of the 
United States, every inducement being offered to the Amer¬ 
ican inventor to procure patents in that country. 

The cost of applying for a Canadian patent is $50, provided 
the case is a simple one. This includes the first government fee 
of $15 and our office charge of $35 for professional services. 
On the allowance of the application a second government fee of 
$20 is due to issue the Canadian patent. The patent is granted 
for eighteen years. 

Under the new Law in Canada, it is very important that the 
patent application be filed as soon as possible and, in any case, 
within one year of the date of the filing of the first patent appli¬ 
cation in the United States or other country. 

It is no longer necessary to manufacture in Canada under the 
patent in order to keep the patent in force, but, if the patentee 
does not commence the Canadian manufacture within three years 
of the date of the patent, he may be required to grant licenses 
for reasonable royalties permitting others to manufacture in Can¬ 
ada. The importation of the patented article into Canada is per¬ 
mitted under the new Law, but the Canadian market should not 
be supplied wholly or mainly by importation after the third year 
of the patent term. 

FOREIGN PATENTS 

I T is not necessary to delay the filing of foreign applications 
until the United States case is allowed, but unless there are 
compelling reasons to the contrary the applicants should await 
favorable consideration of the United States application. All 
foreign applications may be filed at one time, if expedient. 



20 


Patents 


If the inventor is not prepared to proceed immediately with 
foreign patent applications, care should be taken to delay the issue 
of the United States patent and to prevent the invention from 
becoming publicly known until the question of the protection of 
the invention abroad has been finally decided. In Canada a patent 
application should be filed within one year of the filing of the 
patent application in the United States. _ 

Should the inventor permit the United States patent to be 
issued before he has applied for foreign patents he loses the 
opportunity of obtaining patents in many countries; for very 
often a foreign patent is invalid if the invention has been pre¬ 
viously patented elsewhere, and the inventor is thus deprived of 
the benefits that he might easily have secured. There are some¬ 
times exceptions to the above general rule, namelythe provisions 
of the International Convention which permit an inventor to file 
patent applications in many foreign countries during the year 
following the filing of the United States patent application even 
should the United States patent have been issued. For more de¬ 
tailed information in regard to this question we refer the reader 
to our “Hand Book on Foreign Patents.” A new and illustrated 
edition will be sent free on request. 

The prestige and fame of the ingenuity of the American in¬ 
ventor is recognized throughout Europe and other foreign regions 
to such an extent that good American inventions are in demand, 
and if proper steps are taken, an inventor may reap substantial 
benefits upon the commercial exploitation of his invention abroad. 

PUERTO RICO AND THE PHILIPPINES 

AN invention may be protected in Puerto Rico and the Philip- 
pines by the extension of the United States patent to these 
possessions. Information in regard to the proper method 
of procedure and cost will be furnished on application. 

TRADE-MARKS 

T HE average business man has only the vaguest notion of 
the value of a trade-mark. He does not realize that it is 
very often the connecting link between the producer and 
the ultimate consumer; that it is a symbol of good will, a tangible 
asset with a determinable money value; that it must be chosen 
and applied not in a haphazard way, but with a due regard of 
its psychological effect upon the public. It is the handle by which 
the purchasing public is taught the merchant’s wares. Nor does 
he realize the importance of complying with the statutory require¬ 
ments which secure to him rights and benefits in a trade-mark 
comparable with the property right that an inventor acquires by 
taking out a patent. 

The mere fact of registration in the Patent Office is prima facie 




Patents 


21 


evidence of ownership. Triple damages may be recovered from 
an infringer if circumstances are such as to satisfy the Court 
that penalties in addition to the losses actually proved should be 
imposed. Any litigation involving the right to the use of a reg¬ 
istered trade-mark is brought within the scope of the Federal 
Court, which is of decided advantage to the one whose mark 
is infringed. 

Furthermore, it is possible ta prohibit the importation of goods 
bearing spurious registered trade-marks into the United States 
by depositing copies of the registration with the Secretary of the 
Treasury and the collectors of suitable ports of entry. 

Our fee for service for preparing, filing and prosecuting an 
application for registration of a trade-mark before the Examiner 
of Trade-Marks usually amounts to $35, to which must be added 
the Government fee of $10, making the usual cost $45. This 
fee, of course, merely covers the application for registration of 
a simple word or title, but if the trade-mark involves a special 
design or a pictorial representation, an additional charge is made 
to cover the extra work in making the official drawing. This 
additional charge rarely exceeds $5. 

The customary fee for filing a trade-mark with the Secretary 
of the Treasury to prevent importation of goods under an in¬ 
fringing mark amounts to $30, which includes the cost of prepar¬ 
ing the petition, filing of copies, etc. 

It is often advisable before an application for registration of 
a trade-mark is filed, to make a search of the records of the 
Patent Office to ascertain whether such trade-mark is available 
for registration for the particular line of goods upon which it is 
used. The fee for this service usually amounts to $5. 

Owners of trade-marks are cordially invited to submit to us 
their trade-marks, trade names and the like for our advice as to 
whether the mark is a proper subject matter for registration, 
and this advice will be cheerfully given without charge. 

We would also advise anyone interested in trade-marks to peruse 
carefully the discussion of that subject appearing in the latter 
part of this booklet. 

PRINTS AND LABELS 

P RINTS and labels possessing artistic merit come under the 
Copyright Law, but are registrable in the Patent Office. The 
purpose of a print is to protect artistic advertising matter 
which is not intended to be affixed to the goods. In the case of 
a label the latter should be artistic and should be affixed to the 
goods. The cost of an application, either for a print or a label, 
usually amounts to $20, which includes the Government fee. The 
print or the label should refer to the merchandise in connection 
with the sale of which it is used, and ten copies are required to 
be filed with each application. An application for the protection 



22 


Patents 


of either a print or a label should be filed within a reasonable 
time after publication, and each copy should bear the following 
notice: “Copyright,” with the year when first published and the 
name of the proprietor. 


COPYRIGHTS 


A COPYRIGHT may be obtained by anyone who is the 
author, inventor, designer or proprietor of a book, periodi¬ 
cal, lecture, sermon, address, dramatic composition, dramat- 
ico-musical composition, map, work of art, including models or de¬ 
signs for works of art, a reproduction of a work of art, a draw¬ 
ing or plastic work of a scientific or technical character, a photo¬ 
graph, a print or a pictorial illustration, or the like. 

Works which are to be printed in copies for sale must be pub¬ 
lished with the notice of copyright thereon before the filing of 
the application for registration, and two copies of the work must 
be filed with the application. When the work is not to be sold, 
one copy must be filed with the application. Should the work 
be subsequently printed in copies for sale two of such copies must 
be filed. 

Authors and proprietors who desire to protect their works under 
the copyright should communicate with us as soon as possible, and 
the following information should be furnished. 

We should be advised of the citizenship of the author of the 
work and the names and addresses of the parties who set the type 
for the printing of the work and those who attended to the print¬ 
ing. We should also be given the name and address of the parties 
who attend to the binding of the work if it is bound. When the 
two copies, necessary to be filed with the application, are sent to 
us, we should be informed of the date when the printing of the 
book was completed, and also the first date of the publication of 
the book. 

Our charge for services in connection with the securing of copy¬ 
right registration is $10, which amount should be remitted when 
two copies of the work are forwarded to us. 

Copyrights are granted for an original term of twenty-eight 
years, and may be renewed for a term of twenty-eight additional 
years if the renewal application is filed within one year prior to 
the expiration of the existing term. 

Copyright registration may be assigned, it being necessary that 
the deed of assignment be recorded in the Library of Congress 
at Washington, D. C., to give constructive notice to third parties. 

Citizens of foreign countries may obtain copyright registrations 
here, provided reciprocity exists or corresponding privileges are 
allowed to Americans in such foreign countries, and that the said 
reciprocal conditions have been made known by proclamation of 
the President of the United States. 

The following notice of copyright must be printed on the title- 
page or under the title on every copy of the copyrighted work: 



Patents 


23 


“Copyright, 19—, by -” 

This exact form should be used, as any variation may invalidate 
the copyright. 

Works of art, photographs and prints may bear notice con¬ 
sisting of capital letter C within a circle and the proprietor’s 
initials, but the full name of proprietor must be placed on the mar¬ 
gin, back or base of the picture or other article. 




INFRINGEMENT OF PATENTS AND 
TRADE-MARKS 

UNFAIR BUSINESS COMPETITION 

I NFRINGEMENT consists in the unlawful use, sale or manu¬ 
facture of a patented article, without the consent of the 
patentee or owner, or the use by a competitor, of a trade¬ 
mark or trade name, so similar to one already in use, that con¬ 
fusion is apt to arise to the injury and damage of the one who 
first adopted and used the trade-mark. 

It has been held that it is not an infringement to make a pat¬ 
ented article simply for private experimental purposes, with a 
view to test the efficiency of the patent, or to improve upon the 
same, or for other purposes of private investigation. 

The statement is often made: “Before I apply for a patent, 
I wish to know whether my invention infringes any other existing 
patent.” To answer this question would entail an expense which 
is usually far more than the actual cost of obtaining the patent. 
The Patent Office, in passing on an application, does not consider 
this question, and it is far better to apply at once for a patent 
and postpone the question of infringement, which, of course, may 
never arise, until the patent is granted. By applying for a patent, 
you may obtain the benefit of an official examination as to the pat¬ 
entability of the invention, which perhaps may be all that you 
require. 

All good improvements are worth patenting, irrespective of the 
fact that their use may be found to infringe a prior patent, and 
many inventors have made large sums of money in selling their 
improvements to the owners of the original patents with which 
their patented improvements can be used. Infringements occur 
much less frequently than most people suppose, and in general 
unless you have some special reason to believe that an infringe¬ 
ment exists, the best way is not to be troubled about ft until some¬ 
one calls the matter to your attention. It may even be that the 
owner of the infringing device has an invention far more valuable 
than the patent with which it conflicts. A good example is that 
of Howe, the inventor of the sewing machine, who derived a 
revenue which came from the owners of two infringing patents 


Patents 


25 


paying him a small royalty on each machine, while the net profits 
of the infringing companies were many times that received by 
Howe. 

The general rule of law is, that the first original patentee is 
entitled to a broad interpretation of his patent claims. The scope 
of any patent is, therefore, governed by the inventions of prior 
date. To determine whether the use of a patent is an infringe¬ 
ment of another generally requires a most careful examination 
of all analogous prior patents, and an opinion based upon such 
research requires for its preparation much time and labor. The 
expense of these examinations, together with a written opinion, 
varies anywhere from $50 to $500 or more, according to the 
amount of time and labor involved in preparing the same. 

Munn & Co. practice exclusively before the Patent Office and 
its appellate tribunals and therefore all litigation arising in the 
office of Munn & Co., such as suits for infringement of patents, 
trade-marks and copyrights, unfair business competition, the prep¬ 
aration of licenses and contracts, the formation of corporations, 
as well as validity and infringement investigations and opinions, 
is conducted by the law firm of Munn, Anderson & Munn, Wool- 
worth Building, 233 Broadway, New York, which specializes in 
this branch of the profession and one of whose members con¬ 
stitutes the firm of Munn & Co. 

INTRODUCING AN INVENTION 

I F you have selected important people in your canvass, people 
who know something of manufacturing the particular kind 
of invention that you have patented, you will not have gone 
far before you will have interested someone who may help you. 
Probably some two or three men may be brought together to start 
the manufacture of your device. You furnish the patent and they 
furnish the money. You should be ready to make favorable terms 
with such people. You may have a patent that is worth a great 
deal. You are entirely justified in giving away to the right man 
one-half of that patent, or of its value. It is good business on 
your part to do this, provided you select the right man as the 
beneficiarv. This course should lead to the manufacture of the 
article. The right man being interested in the patent may bring 
it and you into touch with just the right people to make the 
biggest thing possible out of your invention. . 

Your invention may be of such a nature that its sale may not be 
practicable in this way. It may be merely an attachment to a 
complicated machine and not a complete article in itself. It may 
be, for instance, an attachment to a typewriter. This attachment 
by itself may not lend itself to independent manufacture. It raay 
be of use only to the big manufacturers of typewriters, ihe 
managers of the local typewriter agencies should be able to ap¬ 
praise its value to a certain extent.. The general agents of your 
state are bigger men and their opinions would be of still greater 



26 


Patents 


value. If they are sufficiently interested, they may bring - the 
matter to the attention of the factory, or they may give you 
letters to their central manufacturing plant that will get you a 
hearing. 


HOW TO GET IN TOUCH WITH MANUFACTURERS 

If your invention is complete, or if your patent is not for a 
thing which is complete in itself, you should get in touch with the 
manufacturers who make the things of which it is a part. If you 
know of no agents or manufacturers for those articles, write to 
the list department of the Scientific American, and obtain one or 
two addresses, or if a list of manufacturers is desired the same 
can be furnished for a small fee of from one to three dollars. 
Assuming that you have received sufficient encouragement and 
have your invention sufficiently developed to demonstrate it, you 
may find it worth your while to make a trip to the factories and 
personally interview the one who is the authority on this par¬ 
ticular matter. 

If your invention is worth while and you present it to the people 
who are interested, and if there are no trade reasons why it should 
not be adopted, you are sure of a sale, and you ought to have no 
difficulty in making it. 

But when you make your sale be sure to consult a competent 
patent attorney. There are several different kinds of assignments, 
license agreements and similar contracts. Each has its merits and 
demerits. The particular form of instrument that will meet your 
case and safeguard your interests should be determined upon only 
after consultation with your attorney. 



PART II 


WILL IT PAY TO APPLY FOR A PATENT? 

E VERY inventor has asked himself the question. Whether 
the answer is “Yes” or “No” depends entirely on the in¬ 
vention. If the invention supplies a real need, if it is dis¬ 
tinctly better than a similar profitable device with which the 
world has long been familiar; if, above all, it is marketable, there 
is every reason to suppose that a patent will pay. Obviously a 
better market may be predicted for a patented cotton picker than 
for a daisy picker. 

First of all, then, the inventor must ascertain if there is a 
demand for the thing he intends to develop. He should view 
his idea from the standpoint of a possible purchaser and manu¬ 
facturer and judge from that angle whether or not it would pay 
to take out a patent. He should consider the probable price that 
the purchaser will be willing to pay for such an article. He 
should determine whether or not the article can be manufactured 
with sufficient cheapness, so that its sales may be sufficiently 
profitable. There may be articles on the market that will com¬ 
pete, and this competition must be met. For all these reasons, the 
inventor should think of the marketing problem before he gives 
much time to a prospective invention. 

BEWARE OF THE PATENT BROKER! 

After his patent has been granted, the inventor will receive cir¬ 
culars from numerous sources, embodying proposals to market his 
patent. He wonders how his name and address have been dis¬ 
covered. As soon as a patent is granted, that fact is recorded in 
the Official Gazette of the United States Patent Office. The title 
of the invention, the name and address of the inventor, a small 
drawing of the invention, and a few of the claims appearing in his 
patent are published. Hence the hundreds of inventors whose 
names and addresses appear in the Official Gazette from week to 
week are made the object of an attack from a horde of hungry 
seekers for money, among whom are ex-clerks, ^ patent brokers, 
and patent attorneys of varying degrees of intelligence and hon- 


28 


Patents 


esty. The patentee is deluged with circulars and letters from 
these men. Some write to inform him confidentially that his patent 
is good for nothing, but that on the receipt of a certain fee it 
will be set right and made absolutely sound and valid. Others 
cheerfully inform him that they have read his patent with pleasure, 
and consider his invention most valuable. But, it is added, the 
invention must be propertly introduced. An estimate of the value 
of the invention for various states is given. The state of Iowa, 
the inventor is told, is worth perhaps $50,000 j Ohio, $45,000; 
Pennsylvania, $65,000; and so it goes. According to these cir¬ 
culars, it is simply necessary to print the circulars and to do a 
little advertising, for all of which the inventor is asked to gen¬ 
erally offer to pay from $10 to $50 in cash in advance. 

Then, too, there is the $6.30 trick, which consists in extracting 
$4.80 from the inventor for pretended advertising, and $1.50 on 
some other pretext. The division of the money into two items, 
the promoter thinks, makes it easier to hoodwink the inventor. 
The whole amount is small, but the victims are numerous and the 
trick, often repeated, yields much money. 

Sometimes a broker will write to say that he has received an 
actual offer of $10,000 for the Canadian patent rights, provided 
that the patent is taken out at once. Need we say that he also 
adds how willingly he will attend to the Canadian patent on re¬ 
ceipt of the necessary money? 

Such patent brokers rarely effect a bona fide sale. They de¬ 
pend upon the advance fees obtained for their livelihood. 

Patent insurance is a more modern method of relieving in¬ 
ventors of their money. Companies with imposing names repre¬ 
sent themselves to be corporations for insuring inventors against 
infringement. If the inventor will but pay them $8 or so within 
thirty days of the issuance of his patent, the company undertakes 
to insure him for one year against any infringement. In addition 
it will give legal advice, so the fable runs, for which any other 
attorney would charge from $250 to $10,000—all to extract $8 from 
a believing inventor. 

Against such adroit schemes the inventor must constantly be 
on his guard. To sell patents requires earnest and honest work. 
No one in this world gives anything for nothing. A patent can¬ 
not be sold simply by sitting in an office and sending out false and 
misleading circulars. 

Munn & Co. never undertake the sale or promotion of patents, 
our work being confined entirely to our professional practice before 
the United States Patent Office and the patent offices of foreign 
countries as solicitors of patents. Neither do we endeavor to 
induce inventors to become clients through the medium of mis¬ 
leading advertisements, such as “inventions wanted,” or by pre¬ 
paring iists of inventions for which prizes and the like have been 
offered from time to time. We are always pleased to give our 
clients any information which we may have as to existing bona 



Patents 


29 


fide offers made by manufacturers or others for inventions neces¬ 
sary to the advancement of their business interests. 

There is no easy road to wealth; and this truism applies to 
selling patents as well as to everything else. To introduce an 
invention requires effort and constant attention to business. 
Usually the patentee himself is the best selling agent; for he is 
familiar with the merits of his invention. If, on the other hand, 
he is unable to attend to this matter himself, he may try adver¬ 
tising on his own account. As a last resort he may enlist the 
services of a reputable agent, who can travel and who can explain 
and demonstrate the invention. 

ASK THOSE WHO OUGHT TO KNOW WHAT THEY THINK OF YOUR 

INVENTION 

Whoever the inventor may be and wherever he may live, there 
is, near him, someone who is an authority upon the very sort of 
thing he has invented. If it is a railway appliance, there are 
men in the repair shops of the nearest railway division who will be 
excellent judges of its merits. If the invention is to be used in 
the building trades, the men who are putting up the business 
blocks of your home town may be asked about it. The local hard¬ 
ware man should be a fair judge of the usefulness of any ordinary 
tool. It is not likely that you will invent anything with reference 
to factory machinery, unless you live in the atmosphere of a factory 
town. In that case you have at your very door the authority to 
whom to show your models. There are always practical people 
near you to whom you may turn for advice. But you should re¬ 
member that only the advice of successful and practical people is 
worth while. Go to the man at the top if you can. If he is in¬ 
terested something may be accomplished. The enthusiasm of the 
unimportant or unknowing man avails nothing. 

Criticism, condemnation, ridicule of your invention _ may not 
justify its abandonment. Many of the greatest inventions have 
been ridiculed in the beginning. Make the critics show you why 
vour invention is not good. If you are an intelligent man and 
they cannot show' you why you have invented nothing of merit, 
keep up your confidence and your efforts. This criticism will 
breed new ideas and improvements. 

If your idea is any good, it will emerge from this fire of criti¬ 
cism all the better. ' Defects will be pointed out, and these you 
must remove. Then, too, the invention may have attracted back¬ 
ers. The successful men who know most of the sort of industry 
in which your invention is to be used, are the very kind of men 
who arc likely to finance its manufacture. They understand its 
usefulness and its possible market. They are successful people 
who have influence with financiers and therefore are likely to 
raise money with which an enterprise that promises great profits 
may be put on its feet. 



PART III 


ABSTRACTS OF DECISIONS AND PATENT 
LAW POINTS OF INTEREST 

W HERE one inventor has completed his invention before 
another, and the latter applies for a patent promptly and 
before the first inventor applies or puts it to practical 
use, the second inventor is entitled to the patent, and the first 
one is deemed to have abandoned his rights. Pattee v. Russell, 
3 O. G., 181; Ex parte Carre, 5 O. G., 30; Johnson v. Root, 
1 Fisher, 351. 

As between two rival inventors, the test of priority is the dili¬ 
gence of the one first to conceive it. If he has been diligent in 
completing it, he is entitled to receive the patent. If he has been 
negligent, the patent is awarded to his opponent. (See pages 16 
and 17 of this book, on “Interferences/’) 

The construction and use in public of a working machine, 
whether the inventor has or has not abandoned it, excludes the 
grant of a patent to a subsequent inventor. An abandonment in 
such case inures to the benefit of the public and not to the benefit 
of a subsequent inventor. Young v. Van Duser, 16 O. G., 95. 

A mere aggregation of old devices is not patentable when each 
of the elements is individually unchanged in function and effect. 
They are patentable when they are really a true combination, 
that is, “by the action of the elements upon each other, or by their 
joint action on their common object, they perform additional func¬ 
tions and accomplish additional effects.” Robinson on Patents, 
Sec. 154. 

A change of shape enabling an instrument to perform new func¬ 
tions is invention. Wilson v. Coon, 18 Blatch, 532; Collar Co. v. 
White, 7 O. G., 690, 877. 

A patent which is simply for a method of transacting business 
or keeping accounts is not valid. U. S. Credit System Co. v. 
American Indemnity Co., 63 O. G., 318. 

The law requires that manufacturers of patented articles give 
notice to the public that the goods are patented by marking thereon 
the date of the patent or giving equivalent notice. When this 
law is not complied with, only nominal damages can be recov- 

[ 30 ] 


Patents 


31 


ered, unless the infringer has actual knowledge of the patent. 
Wilson v. Singer Mfg. Co., 4 Bann. & A., 637; McCourt v. Brodie^ 
5 Fisher, 384. 

To prevent fraudulent impositions on the public, it is forbidden 
that unpatented articles be stamped “Patented,” and where this 
is done with intention to deceive, a penalty of one hundred dollars 
and costs for each article so stamped is provided. Any person 
may bring action against such offenders. Walker v. Hawxhurst, 
5 Blatch, 494; Tompkins v. Butterfield, 25 Fed. Rep., 556. 

A patentee is bound by the limitations imposed on his patent, 
whether they are voluntary or enforced by the Patent Office, and 
if he accepts claims not covering his entire invention he abandons 
the remainder. Toepfer v. Goetz, 41 O. G., 933. 

Claims should be construed, if possible, to sustain the patentee’s 
right to all he has invented. Ransom v. Mayor of N. Y. (1856), 
Fisher, 252. 

The assignor of a patented invention is estopped from denying 
the validity of his own patent or his own title to the interest 
transferred. He cannot become the owner of an older patent and 
hold it against his assignee. Robinson on Patents, Sec. 787, and 
notes. 

Each co-owner of a patent may use his right without the con¬ 
currence of the others and license at will. Washburn & Moen 
Co. v. Chicago Wire Fence Co. (1884), 109 Ill., 71. 

A court of equity may direct the sale of an inventor’s interest 
in his patent to satisfy a judgment against him, and will require 
the patentee to assign as provided in Rev. Stat., Sec. 4898, and 
if he refuses, will appoint a trustee to make the assignment. 
See Murray v. Ager, 20 O. G., 1311. 

A patent right cannot be seized and sold on execution. Carver 
v. Peck, 131 Mass., 291. 

A receiver cannot, under his general powers, convey the legal 
title to a patent (Adams v. Howard, 23 Blatch, 27), but a court 
may compel an insolvent to assign his patents to a trustee or 
receiver. Pacific Bank v. Robinson, 20 O. G., 1314; Murray v. 
Ager, 20 O. G., 1311. 

Any assignment which does not convey to the assignee the entire 
and unqualified monopoly which the patentee holds in the territory 
specified, or an undivided interest in the entire monopoly, or 
makes provision for installment payments, the amounts of which 
depend on the number of the patented articles made or sold in the 
future, is a mere license. Sanford v. Messer, 2 O. G., 470; Gay- 
lor v. Wilder, 51 U. S., 477; Waterman v. Mackenzie, 138 U. S., 
252; Hiner v. Oldrich Co., 255 Fed. 785. 

A license is not transferable unless its terms so state. Racine 
Seeder Co. v. Joliet W. C. R. Co., 27 Fed. Rep., 367; Olmer v. 
Rumford Chem. Co., 109 U. S., 75. 

A shop right is a mere license and not transferable. Searles 
v. Bouton, 21 O. G., 1784. 

A patent license is governed and defined by State law, as dis- 





32 


Patents 


tinguished from statutory patent law, and is subject to the incidents 
which attach to all agreements. Robinson on Patents, Sec. 806. 

A breach of a covenant in a license does not work a forfeiture 
of the license unless it is so expressly agreed. Consolidated 
Middlings Purifier Co. v. Wolf, 37 O. G., 567. 

A lawful sale of a patented article by a patentee or grantee, 
within his own territory, carries with it the right to use such 
article throughout the whole United States. Adams v. Burke, 
5 O. G., 118; Hobbie v. Smith, 27 Fed. Rep., 656. 

The purchase of a machine carries with it the right to repair 
the machine, and replace worn parts until the essential original 
parts of the machine have disappeared. Robinson on Patents, 
Sec. 827. 

Employers are not entitled to the inventions or patents of an 
employe, unless there is a special agreement to •'hat effect; but 
where an employe has invented a machine, and puts the invention 
into practical use in the employer’s business, or permits the em¬ 
ployer to build or use the machine, a license to continue such use 
may be implied. See Hapgood v. Hewitt, 21 O. G., 1786; Jencks 
v. Langdon Mills, 27 Fed. Rep. 622; Barry v. Crane Bros. Mfg. 
Co., 22 Fed. Rep., 396; Pressed Steel Car Co. v. Hansen, 137 Fed. 
Rep., 403- 

An employer who has employed a skilled workman, for a stated 
compensation, to devote his time and services to devising and 
making improvements in articles manufactured by the employer, 
is not entitled to a conveyance of patent obtained by the employe 
while so employed, unless there is an express agreement to that 
effect. Dalzell et al. v. Dueber Watch Case Mfg. Co., 63 O. G., 
1381; Schroeder v. Wageley & Stoeke, 1180 G., 268. 

A contract between an employer and employe, wherein the em¬ 
ploye obtains service with the employer on condition that any im¬ 
provement he may make on the machines of the employer shall 
be for the exclusive use of his employer, held valid. U. S. Court 
of Appeals, Rulse v. Bonsack Machine Co., 70 O. G., 1498. 

ft It is a well-established principle of the patent law that where 
an inventor employs another to embody his conception in prac¬ 
tical form he is entitled to any improvement therein due to the 
mechanical skill of the employe; but if the latter goes farther 
than mechanical skill enables him to do and makes an actual in¬ 
vention he is entitled to the benefit thereof. An invention does 
not lie in the idea that a certain result would be desirable, but 
in the conception of the means for accomplishing that result, and 
one who claims the benefit of the work of another must show 
that, he communicated to the one who did the work an idea of 
specific means for accomplishing the desired end.”—Underwood’s 
Card Digest. See also Soarkman v. Higgins, 1 Blatchf. 206; 
Yoder v. Mills 3400 G., 1048: 25 Fed. Rep. 821, Huebel v. Bernard, 
90 O. G., 751; 15 app., D. C., 510: Agawan v. Jordan. 7 Wall, 
583; Neth & Templin v. Ohmer & Ohmer v. Ohmer, 135 O. G., 662. 

An employer is not entitled to any knowledge of the independent 




Patents 


33 


inventions of his employe. Mallett v. Crosby, C. D., 1870; p. 70; 
American Stoker Co. v. Underfeed Stoker Co., of America, 182 
Fed. Rep., 742; Johnson Furnace & Engineering Co. v. Western 
Furnace Co., 178 Fed. Rep., 819. 

A purchaser at sheriff’s sale of a patented machine belonging 
to and sold as the property of the owner of the patent has the 
right to use such machine. Wilder v. Kent, 15 Fed. Rep., 217. 

“Since the right to issue patents is specially delegated to the 
Federal Government by Sec. 8 of Article 1 of the Constitution, it 
follows that no State may grant a patent. But * * * the Supreme 
Court is generally disposed to leave to the State legislatures and 
courts the enactment and enforcement of regulations affecting the 
exercise of the patent monopoly in the protection of business and 
morals, so long as such action does not interfere with vested 
rights and the exercise of legitimate activity.” (“The Fixed Law 
of Patents,” Macomber.) 

No State can disturb or modify either the privileges granted by 
Letters Patent nor their enjoyment by the persons on whom they 
are bestowed. Robinson on Patents, Sec. 46. 

A State may require the taking out of a license for the sale 
of manufactured articles, and the fact that the article is produced 
under a patent will not defeat this power. It is only the right to 
the invention or discovery—the incorporeal right—which the State 
cannot interfere with. Weber v. Virginia, 20 O. G., 369. 

Cooley, J., held that “Any State legislation which undertakes 
to limit or restrict in any manner the privileges which the Letters 
Patent confer is an invasion of the sphere of national authority, 
and therefore void.” People v. Russell, 25 O. G., 504. 

A State cannot discriminate against patented articles by im¬ 
posing upon their sale conditions and restrictions not placed on 
the sale of other similar articles. Palmer v. State, 39 Ohio, 236. 

A State has power to prescribe the terms of a note given for a 
patent; also to require the vendor of patent rights to file with the 
county clerk copies of the Letters Patent. See Hankey v. Downey 
(1888), 116 Ind., 118; Herdic v. Roessler (1888), 109 N. Y., 127. 

That a State cannot tax drummers from other States selling 
patented or other goods by sample. See Robbins v. the Taxing 
Dist. of Shelby County, Tenn.; Gorson v. Maryland (U. S. 
Supreme Court, 1887). 

A previous mechanical patent is of itself no bar to the grant 
of a patent to the patentee therein for a design shown in such 
patent. “Whichever kind of patent is first obtained by the in¬ 
ventor, it will not be a bar to the grant to him of a patent of the 
other kind.” Ex parte Palmer, 21 O. G., mi. 

The circulation of threatening letters or circulars alleging in¬ 
fringement will be enjoined when the language of the letters or 
circulars is “false, malicious, offensive, or opprobrious, or they 
are used for the wilful purpose of inflicting an injury.” Kelly 
v. Ypsilanti Dress-Stay Mfg. Co., 54 O. G., 659. 

At the death of a patentee, the title vests in the executor or 




34 


Patents 


administrator. Shaw Relief Valve Co. v. City of New Bedford, 
19 Fed. Rep., 753. 

Action for damages for infringement of a patent by the Fed¬ 
eral Government may be brought in the Court of Claims (Chapter 
423, Vol. 36, Part I. U. S. Statutes-at-Large). 

The United States has undoubted authority to exert the power 
of eminent domain for the appropriation of a license to use those 
inventions which are of vital public interest necessary to the exist¬ 
ence of the government, the appropriation thus made being sanc¬ 
tioned by the means of compensation for which the statute pro¬ 
vides. (Decree 32 App. D. C., 1 reversed.) Crozier v. Fried. 
Krupp Actiengesellschaft, 178 O. G., 1154; 224 U. S., 290. 

Officers and enlisted men may obtain patents, but they and their 
assignees are barred from suing the Government in the Court of 
Claims, and are dependent on whatever relief may be obtained by 
action against individual officers or agents of the Government. 
See Belknap v. Schild, 161 U. S., 10; Krupp v. Crozier, 32 App. 
Cas., 1 D. C. 

United States Letters Patent grant the exclusive right to make, 
to sell, and to use an invention, and no unauthorized person may 
make a patented invention even for his or her own use. See In¬ 
fringement, pages 24 and 25. 


THE SCIENTIFIC AMERICAN 

O N the threshold of eighty years of publishing, the Scientific 
American looks back on a four-score years’ record of pioneer 
service in the varied fields of science and industry—and looks 
forward to years of continued support to progress in these fields. 
All this time, the Scientific American has been the rendezvous for 
the man with an idea and the man seeking an idea for commer¬ 
cial exploitation. Manufacturer, inventor and lawyer meet on 
common ground in Scientific American. 

These eighty years of Scientific American's publishing have seen 
the conception and development of all the great achievements 
which we call modern. The steamship and subway, telephone and 
telegraph, incandescent lamp, the countless machines of factory, 
mine and mill, the engines of transportation, the automobile, motion 
picture, wireless and radio—have all had their public introduction 
in the printed pages of Scientific American. Howe, Spencer, 
Edison, Gatling and many other well-known inventors have visited 
the editorial rooms of the Scientific American early and late in 
their career, in order to place the first authentic and authorized 
account of their work before a worthy audience. 

Today, as a journal of practical information, the Scientific 
American needs little introduction. Its aim and purpose know no 
confines; it is as far reaching as the corners of the world, limited 
only to the English language. Its interest is the interest of the 
business man and inventor, the professor and student, the engineer 



Patents 


35 


and mechanic, in fact, all men who wish to keep up with the 
progress of science and industry. 

The Scientific American is not a technical publication. Its aim 
is to simplify science; and consequently its articles are written in 
a lucid style and are models of brevity. The lengthy paper read 
before a gathering of eminent scientists; the technical report of 
an engineer on a great project; the blue print of the manufacturer, 
or the curves and formulae of the electrical engineer working out 
an equipment problem—all these complicated matters, incompre¬ 
hensible as such to the layman, are translated by the Scientific 
American editors into readable entertaining articles without sac¬ 
rifice in reliable information. 

Although this aim makes Scientific American understandable to 
all men, it is, nevertheless, very valuable to technical men in the 
monthly record of events in his and allied fields. It records dis¬ 
coveries, inventions, achievements and important happenings in the 
fields of pure and applied science, engineering and industry. In 
the preparation of this material over two hundred foreign and 
domestic trade journals are digested to give the Scientific American 
readers the important news therefrom. 

And there is the practical service which the Scientific American 
extends to its readers. To the end of taking care of the vast 
amount of inquiries that find their way Lo the editorial rooms of 
the Scientific American, approximating twenty thousand a year, 
this journal maintains a considerable staff of eminent professors, 
engineers and other experts whose aim is to give practical informa¬ 
tion to the readers. 

Thus, a review of the Scientific American over the twelve 
months of the year means an accurate and lucid record of the 
year’s accomplishments, the outstanding developments of an age 
that is moving rapidly to machine precision in all the industries 
and sciences. As scientists delve into the unknown, as explorers 
and discoverers give us new fields, and manufacturers new prod¬ 
ucts the Scientific American is the journal that will give the world 
its printed description and authentic report. 





INDEX 


Abstract of decision, 30-34 
Appeals, 15 
Assignments, 11 


Canadian patents, 19 
Compounds, 13 
Copies of patents, 18 
Copyrights, 22 
Cost of patents, 7 


Defective cases, 15 
Design patents, 13 

Filed applications, 14 
Foreign inventors, 10 
Foreign patents, 19 


History of Munn & Co., 1 

Infringements, 24 
Instructions from inventor, 7 
Interferences, 16-17 
Introducing inventions, 25-26 


Joint applications, 10 


Labels, 21 
Lapsed cases, 15 
Lawyers, Word to, 18 


Models, 8 


Patent, How to apply for a, 6 
Patent, Term of, 5 
Patent, What is a, 3-4 
Patentability of inventions, 5-6 
Philippines, 20 

Preliminary examinations, 12 
Prints, 21 
Puerto Rico, 20 


Re-issue of patents, 18 
Rejected cases, 15 


Scientific American, 34 
Security, 3 
Service, 2 
Sketches, 8 


Term of patent, 5 
Trade-Marks, 20-21 


Washington, Going to, 19 
Washington office, 9 
Who may apply, 10 
Will patents pay, 27-29 


[ 37 ] 




TRADE MARKS 













TRADE MARKS 

CONTENTS 


PAGE 

Chapter I. The Trade-Mark as a Business Asset... i 

Chapter II. The Federal Trade-Mark Law. 7 

The Act of 1905. 8 

Association Trade-Marks. 10 

The Ten Years’ Clause. 11 

Classification of Merchandise. 11 

Registration Involves Obligation. 13 

Affixation . 13 

Rules of the Patent Office. 13 

Number of Rejected Applications. 14 

Chapter III. Analysis of the Requirements for Regis¬ 
tration . 15 

A Trade-Mark Must Not Be Identical 

With Another Already in Use. 15 

Red Cross Trade-Marks. 17 

Descriptive Marks. 17 

Geographical Marks. 20 

A Trade-Mark Must Not Be National In¬ 
signia . 22 

Conditions Under Which a Personal 

Name May Be Registered. 22 

Registration of Portraits. 23 

A Trade-Mark Must Not Misrepresent.. 23 
Trade-Marks Not Registrable When Op¬ 
posed to Public Policy. 24 

Other Restrictions. 24 

Chapter IV. The Elements of a Good Trade-Mark... 26 
Nine Tests of a Desirable Trade-Mark.. 28 

Special Notice. 30 



























CHAPTER I 


The Trade-Mark as a Business Asset 

I F you should find in your Santa Claus stocking next Christmas a 
gift for the exclusive right to use “Royal” as a name for bak¬ 
ing powder, you would be very rich, as the mark is one of 
the most valuable in existence, though it is rivaled by other well- 
known marks such as “Kodak,” “Uneeda,” “Ivory” (as applied 
to soap), “Coca-Cola,” and “Gillette” used in connection with 
safety razors and a half dozen others. To displace these marks in 
the public mind would require competition of unheard-of magnitude. 

The trade-marks used by the National Biscuit Company, all of 
which touch the highest standard of' distinctiveness, must be the 
largest asset of the company, and the name “Kodak”—where 
would the business of the Eastman Kodak Company go to if it 
handed the name “Kodak” over to 
some other concern and yet made 
the same goods under the name of 
Smith’s Hand Cameras? 

The aggregate total value of 
well-known American trade-marks 
must be enormous. But any esti- A VERY valuable mark 
mate of the value of a trade-mark, apart from the business to which 
it applies, is necessarily a mere guess, for a trade-mark is a species 
of commercial property that cannot be sold by. itself. It is insepar¬ 
ably attached to the business from which it emanates, and cannot 
be transferred without a transfer of the business. There are cases 
where a concern’s trade-mark has become so valuable, through long 
years of popularity and profit-making, that it entirely overshadows 
ail other assets of the business—in short, the business could not 
exist without it. 

A trade-mark is a symbol of Good-Will—using the words 
“Good-Will” in the same sense that the bookkeeper uses them. 
It stands for built-up reputation; it is the link that connects the 



9 


Trade-Marks. 


ultimate consumer with the manufacturer. It preserves the 
identity of merchandise, and, in carrying out this function, it is 
a device of inestimable value to the commercial world. _ 

Sometimes a complex chain of events is best explained by a 
simple illustration. With this idea in mind, let us put ourselves 
in the place of a woman who wants a 
cake of Ivory Soap.. She lives in a 
desert town in Arizona. She cannot go 
half across the continent to Cincinnati 
to buy a five-cent cake of soap from 
Procter & Gamble. In fact, it is a safe 
bet that she never heard of Procter ‘ & 
Gamble, but she knows that she wants 
Ivory Soap. So she sends her little 
girl down to the “general” store, and 
this lisping messenger asks for “Ivory” 
Soap—not just plain “soap”—and 
brings the familiar package with the 
name on it back to her mother. If the 
this dressed-up duck- storekeeper sends some other kind of 
ling is the trade-mark soap the owner of the nickel knows 
fleece RRIMACK duckling instantly that she did not get what she 
wanted. 

By means of the trade-mark “Ivory” the manufacturers in 
Cincinnati deal with this buyer in Arizona as surely and as 
expeditiously as if the lived across the street from their factory. 
Trace this transaction backward, and you will find its trail 
running unerringly through the retailer, the wholesaler, and the 
jobber to the manufacturer—and at every stage of its journey 
the product kept its personality. It left Cincinnati as Ivory 
Soap, and as Ivory Soap it was put into the consumer’s hands. 

Selling by trade-mark is one of the miracles of modem mer¬ 
chandising. Its development to a state of high efficiency has 
taken place during the last hundred years. 



Competition is the basis of the modern industrial system. 
Plainly defined, a competitive system means a system under 
which every trader, large and small, must be prepared to justify 
his existence at any time. 

In the early centuries of English industrial life, competition 
in the modern sense was unknown, as Townsend Warner points 
out in his “Landmarks of Industrial History.” For centuries 
after the Norman conquest of England, all manufactured articles 
were produced by craftsmen—each master craftsman working 
in his tiny shop with two or three apprentices. 

All craftsmen belonged to gilds, whose status and authority 
were recognized by the law of the time. These gilds fixed the 
prices of commodities—a price “fair to the seller and fair to. the 
buyer.” A craftsman could not push his trade beyond his own 
immediate locality, because in that event he would come in 





Trade-Names. 


japolio 

A WORI.D-FAMOUS TRADE¬ 
MARK. THIS IS A COINED 
WORD, DEVISED ABOUT 
THIRTY-FIVE YEARS AGO BY 
DR. CAMERON, A PHYSICIAN. 


conflict with his brother craftsmen. He made shoes, or harness 

^n e th r °i Ugh W f °° le , n <i 0 . ats - and sold th «m to his neighbor at 
a price that was fair to him and fair to them, and in somnolent 
old age was gathered to his fathers, without having heard the 
word competition” or its equivalent in burly Saxon-French 

With the decay of centuries, the gilds slowly passed away 
and upon their mins arose the modern factory system 

In the new adjustment of things, here and there a craftsman 
with more energy and a longer financial head than his fellows 
began to extend his trade, and employ more journeymen and 
apprentices. 

In I 55° John Winchcombe, “Jack 
of Newbury,” a woolen weaver, had a 
hundred looms at work in his own 
house, and Winchcombe woolens were 
known as far as Antwerp. At the 
same time, London craftsmen were 
selling their goods all over England— 
or, at Yeast, in the larger towns, and there 
was a growing trade with Flanders. 

These manufacturers, as the circle of their trade expanded 
began to see the desirability of marking their products in some 
way to identify them, so that purchasers at a distance would be 
able to distinguish them from similar articles produced by others. 

Any device for identifying a commercial product is a trade¬ 
mark, in the broad significance of the term. 

Some of the early trade-marks were rude initials and cryptic 
Resigns of interlaced crosses and circles. Others consisted of 
dragons and winged snakes, and various real and unreal animals. 

The craftsmen of the fifteenth and sixteenth centuries were 
the first users of trade-marks in England. 

The flickering torch of the antiquarian throws a dim light on 
some sort of trade-mark usage current 
among the Greeks and Romans, and even 
among more ancient trading peoples, but 
these researches hold but little of interest 
to us. Our present purpose is to consider 
the function of the trade-mark in modem 
business, and with that thought in mind, it 
may he taken as an established fact that 
trade-marks, in the modern sense, have a continuous history of 
perhaps five hundred years. 

In the early part of the seventeenth century the gold-beaters 
of Nuremberg were using trade-marks, and they had systematized 
their use to such an extent that an official register of gold-beaters’ 
marks was kept and penalties for the misuse or counterfeiting of 
trade-marks had been established a law. This register has been 
preserved. Its yellowed pages are decorated with curious de¬ 
vices of serpents and dragons, doves and crosses. Without 
exception, the marks of the Nuremberg gold-beaters were picture 
marks. 








4 


Trade-Marks. 




In the early part of the eight¬ 
eenth century the use of trade¬ 
marks was general, in certain 
lines of trade, throughout Europe. 
But the lack of specific legisla¬ 
tion for the registration of trade¬ 
marks at that time—a lack that 



persisted until the nineteenth 
' century—leads one to the con¬ 
clusion that these eighteenth cen¬ 
tury traders did not attach great 
importance to the subject. They 
derby porcelain trade-marks evidently considered the trade- 
originating around the middle mar \ <i a me re minor accessory of 

OF THE EIGHTEENTH CENTURY. business 

The early decades of the nineteenth century witnessed the 
rise of three great forces which were destined to accomplish, in a 
short time, the most profound changes in manufacturing and 
selling methods. These forces were: 


i st. The application of steam power to manu- 
• facturing in a large and economical way. 

2nd. The development of cheap and quick trans¬ 
portation. 

3rd. The invention of means for the rapid dis¬ 
semination of intelligence. 

Factories, employing thousands of hands—great industrial 
monuments to Cheap Power—had inevitably to find distant 
markets for their products. No longer could the manufacturer 
sit at home and await the buyer. His product was too large, 
and its burden was too heavy to carry on a haphazard sales 
plan. Consequently, the selling departments of all enterprises 
grew tremendously in importance. Customers were sought across 
the breadth of a continent. Many a manufacturer’s sales area 
grew, in the span of a generation, from a few hundred square 
miles to a region that included every degree of climate from the 
Arctic to the Torrid. 

To accomplish this result efficient selling methods, and 
economical and fast transportation, were required. 

As a natural consequence of these conditions trade-marks 
grew in importance. Manufacturers without trade-marks found 

that they had no hold on their 
trade. The consuming public 
ww JLjSlllJ VrlU JCj did not know them or their 

Registered Trade Mark products by name, and they 

trade-mark for coat hangers w ere the mercy of the 

shaped somewhat like a wish-bone, jobber, the wholesaler and the 

retailer. They were sup¬ 
ported by a chain of circumstances, of which every link was 
weak. 

On the other hand, manufacturers whose trade-marks were 
firmly fixed in the public mind by reputation began to see that 




Trade-Names : 


5 


they were, to a large degree, independent of the merchandising 
chain. The ultimate consumer knew their trade-marked prod¬ 
ucts, and asked for them by name. 

Thus, by a process of natural evolution, the trade-mark 
developed in importance from a workman’s tool mark to a 
symbol of Good-Will—a business asset in a tangible form. 

It is an axiom of legal philosophy 
that when a thing becomes valuable 
or desirable, legislation concerning 
its regulation and protection springs 
into being. Consequently one looks 
for, and finds, the beginning of 
specific legislation on the subject of 
trade-marks around the end of the 
first quarter of the nineteenth 
century. 

Before the first trade-mark legislation, cases of infringement 
fell under the common law, and were decided in courts of equity. 

H. D. Nims, a well-informed writer on trade-marks, savs in 
his “Law of Trade-Marks and Unfair Trade”: 



(Trademark Reg. U. S. Pal. Off.) 

THIS TRADE-MARK OF A 
DUSTLESS MOP IS AN EX¬ 
CELLENT EXAMPLE OF LETTERS 
USED AS A MARK. 


“It is rarely that one life sees the genesis and maturity of law, 
yet it has almost seen them of trade-mark law. In the eighteenth 
century there were a few scattered decisions which turned almost 
wholly on the question of fraud. With the rise and growth of 
machine-made merchandise in the earlier part of the last century, 
the matter of private marks of merchants to distinguish wares, 
going out into the public markets of the world assumed importance 
and cases multiplied. Trade-mark law is one of the results of 
machinery. It is safe to say that the great mass of trade-mark 
and unfair-trade law is the development of the last forty years.” 

A structure, of which the foundation has been so recently 
laid, must necessarily be still unsettled. The rulings of both the 
Patent Office and the courts are, in many cases, contrary to 
precedent. In some instances, courts in different parts of the 
country have handed down contradictory decisions bearing on 
the same question. But, despite these drawbacks, a body of 
trade-mark law is being slowly formed, and it is only a question 
of time before our feet will be on firm ground. 

Trade-mark cases should be entrusted to attorneys who have 
specialized in this branch of the law. The legal status of this 
subject is changing so swiftly that an ordinary lawyer, absorbed 
in general practice, cannot keep track of it. 


A trade-mark has been defined as follows: 

“A trade-mark may be tersely defined to be any sign, mark, 
symbol, word or words which indicate the origin or ownership of 
an article as distinguished from its quality, and which others have 
not the equal right to employ for the same purpose. In its strictest 
sense, it is applicable only to a vendible article of merchandise to 
which it is affixed.” 

(Ball v. Broadway Bazaar, Court of Appeals, N. Y., 87 N. E. 

674) 

We give this definition because it expresses in the fewest 
possible number of words the function and limitations of trade- 




6 


Trade-Marks. 


marks. Also, because there is in the minds of many business 
men, a confused notion of the difference between a trade-mark 
and a trade-name. By referring to the definition it will be noted 
that a trade-mark is “applicable only to a vendible article of 
merchandise to which it is affixed.” 


On the other hand, a trade-name applies to a business as a 
whole, although this business may be engaged in the sale of not 
one vendible article only, but a thousand. For instance, 
“ Wanamaker’s” is a trade-name and “ Kodak” is a trade-mark. 

A trade-mark has no value except that created by the quality, 
sale, popularity and profit in the article to which it is affixed. 
No matter how distinctive, or attractive a mark may be, it is 
worth but little if it is used in connection with an inferior article 
or with an article sold without profit. 

But a distinctive and suggestive trade¬ 
mark is of immense help in advertising and 
selling. Consider, for example, the trade¬ 
mark of Old Dutch Cleanser. It is full 
of human interest, motion, life, and sug¬ 
gestion. It brings up in the mind the 
mental picture of dirt fleeing from an 
energetic Dutch scouring woman. That 
this mark has been a powerful aid to sales 
is obvious. Suppose Old Dutch Cleanser 
had been called Climax Cleaning Powder. 
Can you imagine anybody acquiring more 
than the most languid interest in anything 
with a name so dull? It reminds one of 
hard and sordid toil. 



A VERY SUGGESTIVE 
AND SUCCESSFUL 
TRADE-MARK. 



CHAPTER II 

The Federal Trade-Mark Law 


T HE function of a trade-mark is to denote origin. As we 
pointed out in the preceding chapter, the necessity for using 
trade-marks arose as soon as the expanding wave of trade 
carried a craftsman’s goods to customers outside of his own 
community. The ancient trade-mark was a simple device in¬ 
vented for the purpose of enabling a maker of any commodity 
to hold his out-of-town customers, so to speak, by enabling them 
quickly and surely to identify his goods. 

Throughout its history the trade-mark has remained tnie to 
its ancient antecedents, and its purpose to-day, as it was in the 
fifteenth century, is specifically to indicate the origin of an 
article of merchandise. 

In this aspect of unchanging purpose, the trade-mark is 
somewhat an anomaly in commercial history. During the last 
four hundred years, methods of manufacture, distribution and 
sale have been revolutionized from top to bottom: banks, which 
began as mere money-changing offices, have become establish¬ 
ments for keeping and loaning funds; the retailer, who used to 
sit in a hole in the wall with a handful of goods, all of the same 
kind, has developed into a merchant selling ten thousand 
different articles; the craftsman, who once served a long ap¬ 
prenticeship, during which he learned to make every part of a 
shoe or a carriage, has become a specialized laborer, employed 
by the day to produce the extreme subdivision of a finished 
article. 

It is strange that, in all this evolution of commercial methods, 
the trade-mark did not undergo a change in function. It might 
have become, by a gradual transformation, a merchant’s mark, 
applied indiscriminately to all goods of every description sold by 
him. Or, it might have evolved into a stamp of merit or high 
quality, regulated by statute and licensed only to manufacturers 
who could prove their right to use it. 

But none of these changes has taken place, and the trade¬ 
mark of the twentieth century has for the beginning and end of 
its function the purpose of indicating to buyers the association 
of merchandise with a particular manufacturer or dealer. 

The present Federal Trade-Mark law went into effect on 
April i, 1905. . 

The reader should understand clearly that the right to own 
a trade-mark is not a creation of the statute, for the use of 
trade-marks, and the recognized right of manufacturers to be 
protected in their use, far antedate any specific trade-mark 
legislation. 


7 


8 


Trade-Marks . 


The intent of the statute is to systematize and codify trade- 
mark practice. It provides a definite procedure for 
1905 Act ° f the registration of trade-marks; lays down rules for 
validity in marks; puts trade-mark litigation, when 
registered trade-marks are the subject matter of the litigation, 
within the jurisdiction of the Federal Courts; and makes every 
trade-mark registered under the law a part of the public records 
of the nation. But a trade-mark may be legally sound even if 
not registered, just as a person may own real estate without 
recording, the title. 

The ownership of trade-marks, like any other property right, 
is recognized by the common law. The Supreme 
Court of the United States has said: “The right 
to adopt and use a symbol or device to distinguish 
the goods or property made or sold by the 
person whose mark it is, to the exclusion of use 
by all other persons, has been long recognized 
by the common law and the chancery courts 
of England and of this country. It is a property 
right for the violation of which damages may 
be recovered in an action at law, and the 
continued violation of it will be enjoined Dy 
a court of equity with compensation for past 
the pom- infringements.” 

peian window Trade-marks, under the Act of 1905, are 
mark .* 1 TRADE ' registered in the United States Patent Office. 

In case of litigation resulting over the right 
to use any trade-mark, evidence of the registration of the mark 
by one of the litigants puts the burden of proof upon the other. 
In other words, the user of the unregistered trade-mark must 
prove priority of use and ownership. This is often a very difficult 
thing to do, especially in the case of trade-marks that have been 
used a long time, for such proof must necessarily rest upon the 
production of old labels, packages of the goods witli the trade¬ 
mark affixed, and the testimony of witnesses. 

The owner of a registered trade-mark does not need any 
evidence other than the public records of the Patent Office to 
establish the date of his first use of the mark. 

When a trade-mark is not registered in the Patent Office, 
litigation concerning it does not come under the jurisdiction of 
the Federal courts, unless the opposing parties are citizens of 
different states. 

On the other hand, all cases pertaining to registered trade¬ 
marks used in interstate or foreign commerce fall within the 
field of Federal jurisdiction, irrespective of the amount in dispute 
or the place of residence of the parties. This is an advantage, 
owing to the fact that an injunction secured in one Federal 
Court will be enforced in all such courts in any state. 

The fee charged by the Patent Office, under the law, for 
registering a trade-mark is ten dollars. This does not include 
the attorney’s fee, which must be paid by the applicant. 

























Trade-Names. 


9 


A certificate of registration remains in force for twenty 
years, and it may be renewed, upon expiration, for like periods 
of twenty years, upon payment of a renewal fee of ten dollars. 

An individual or corporation 
has a right to register a trade¬ 
mark under the United States law 
if the trade-mark for which regis¬ 
tration is sought belongs to the 
applicant and is used by him: 


ist. In commerce among 
the several states: 
and. Or, in commerce with 
foreign nations; 

3rd. Or, in commerce with 
the Indian tribes: 



REG. U.S. PAT, OFF. 


A CELEBRATED UNDERWEAR 
TRADE-MARK, COMPOSED OF THE 
WORDS “POROUS” AND “KNIT.” 
THIS* MARK SEEMS ALMOST DE¬ 
SCRIPTIVE, BUT IT DOES NOT 
“DESCRIBE THE GOODS.” IT DE¬ 
SCRIBES THE KNITTING PROCESS 


provided the owner of the trade- QNLy 
mark resides within the territory 

of the United States (which includes all territory under United 
States control), or has a business establishment situated in 
United States territory, or resides in any foreign country 
which affords, by treaty, similar privileges to citizens of the 
United States. 

Divested of legal verbiage, the main provisions of the Act, 
so far as the features governing registration are concerned, may 
be stated as follows: 


A" trad e-mark A design or wording identical With a registered or known 
is not regis- trade-mark owned and in use by another, and appropriated 
trable if it is : to merchandise of the same descriptive qualities, or which 
so nearly resembles a registered or known trade-mark 
owned and used by another, and appropriated to merchandise of 
the same descriptive qualities, as to deceive purchasers, or to be 
likely to cause confusion in the mind of the public. 

The insignia of the American National Red Cross Society. 

The flag or coat of arms of any foreign nation. 

Any design or picture which has been adopted by a fraternal 
society as its emblem. 

A portrait of a living individual unless the application for registra¬ 
tion is accompanied by the written consent of the individual whose 
portrait is used. 

Scandalous or immoral matter of any description. 

The flag, or coat of arms, of the United States, or of any state, or of 
any municipality, or any of the insignia thereof. 

Any geographical name or term. 

A misrepresentation of the quality, composition, character, origin, 
or nature of the commodity with which it is used. 

Any mark which consists merely in the name of an individual 
firm, corporation, or association, unless said name is written, 
printed, impressed or woven in some particular or distinctive 
manner, or is used in connection with a portrait of the individual. 





10 


Trade-Marks. 


Any arrangement of words or devices descriptive of the goods with 
which they are used, or of the character or quality of such goods. 

In other words, a trade-mark must not be an advertisement in the 
ordinary sense of the word. 

a . j « Unlike any other trade-mark, already in use, and applied 
Atraae-marK to t h e same class of goods. It must not resemble the 
•f *♦. g, f IraD,e trade-mark of a competitor, or of a potential competitor, 

11 11 18 : to such an extent that the buying public is likely to be 

deceived or confused by the resemblance. 

The business name of a person or firm when written, printed, im¬ 
pressed or woven in some distinctive manner, or in association with 
•a portrait, or fn an autographic form. 

Any trade-mark which has been in continuous and exclusive use 
by the applicant since February 21, 1895. 

An arbitrary symbol, or word, or words, or a combination of a 
device and wording, not obviously descriptive of the commodity 
to which it is to be applied. 

Used in lawful trade. 

Of such a character that it may be affixed, printed upon, woven, 
sewed, branded or otherwise impressed upon the product with 
which it is used, or upon the package or container of the product. 

The right to register trade-marks is limited to individuals 
and corporations. 

Under the United States law an association cannot possess 
Association a trade-mark, as exclusive ownership and specific 
trade-marks origin are essential attributes of validity. 

The letters “A-A. L,” meaning Anti-Adulteration League, 
were refused registration as a trade-mark for flour on the ground 
that the mark did not represent origin, but membership in an 
association. The applicant was a voluntary association of flour 
manufacturers. It was held that an association cannot be the 
“owner” of a trade-mark within the meaning of the statute. 

Some states have enacted laws prohibiting the unauthorized 
uSe of the labels of trade-unions and similar associations. These 
laws are not trade-mark statutes. They are based on the 
broader principle of unfair business competition. 

It is the general opinion, we believe, of trade-mark authorities 
that the lack of provision in our law for 
association trade-marks is a defect that 
should be remedied as soon as possible. It 
is a noteworthy fact that most of the other 
great nations recognize association marks. 

An interesting example of an associa¬ 
tion trade-mark is that of the Irish In¬ 
dustrial Development Association (re¬ 
produced on this page). This association 
has a membership of about five hundred 
Irish manufacturers. Its use indicates 
that the merchandise to which it is affixed 
is of Irish manufacture; in other words, 
it is indicative of geographical origin. The Irish trade-mark 



THE IRISH NATION Al 
TRADE-MARK. 







Trade-Names. 


11 



has been registered in Great Britain under the British Trade 
Mark Act of 1905. 

An American by the name of D. B. 

Barrett attempted to register this mark in 
the United States Patent Office under his 
own name. This fact came to the atten¬ 
tion of the Irish Industrial Development 
Association, and some correspondence re¬ 
lating to the matter passed between Mr. 

John Redmond, the leader of the Irish 
Xational party in Parliament, and President THE omah a trade- 

Taft. As the law now stands this Irish chosen from C 764 W de- 
trade-mark cannot obtain in the United signs submitted, the 
States the protection that registration designer received a 

_‘Li. PRIZE OF «Ol)U. THIS 

might glV0,r MARK WILL BE RE* 

Within the last few years several produced on all 
American communities have adopted trade- stationery of omaha 
marks, or labels. The Omaha trade-mark ^ll° be C ™ f^xed A to 
is reproduced here as an example of this all omaha-made 
class of marks. goods.. 


There is a genuine need for an amendment to the law that 
would give this class of marks the right of registration. 

A provision of the Act of 1905 legalized all trade-marks that 
had been in exclusive use by the applicant for ten 
The Ten a years prior to the passage of the act, and this pro- 

ears ause v - s j on a ppij[ es even to trade-marks of ten years’ 
standing that, because of their character, could not be registered 
under the act. The wording of the act dealing with this subject 
is as follows: 

“Nothing herein shall prevent the registration of any mark 
used by the applicant or his predecessors, 
or by those from whom title to the trade¬ 
mark is derived, in commerce with foreign 
nations or among the several states, or 
with the Indian tribes, which was in actual 
and exclusive use as a trade-mark of the 
applicant or his predecessors from whom 
he derived title for. ten years next pre¬ 
ceding the passage of this act.” 

A manufacturer cannot register a trade-mark and file it av ay 
with the intention of using it at some future time. A condition 
of validity is that the mark must not only belong to the applicant, 
but must be “used by him in lawful trade.” An intention to use 
a mark is not sufficient. The use in interstate trade must ante¬ 
date the application for registration. The letter of the law is 
complied with if a single package of the goods with the trade¬ 
mark affixed is sold in good faith in interstate or foreign com¬ 
merce, although the shipment of a sample is not sufficient. 

Those who intend to adopt trade-marks should 
3TS53S k eep in mind that the use of a trade-mark is limited 
dise strictly to one class.of merchandise, which must be 

the class for which it has been registered. 


Coward 

Shoe 

A TRADE-MARK REGIS 
TERED UNDER THE TEN 
YEARS’ CLAUSE. 





12 


Trade-Marks. 


For purposes of classification the Patent Office has separated 
all merchandise into forty-nine general classes, as follows: 


1. Raw or partly prepared ma¬ 

terials. 

2. Receptacles. 

3. Baggage, horse equipments, port¬ 

folios, and pocketbooks. 

4. Abrasive, detergent, and polish¬ 

ing materials. 

5. Adhesives. 

6. Chemicals, medicines 

and pharmaceutical prepara- 
tiQns. 

7. Cordage. 

8. Smokers’ articles, not including 

tobacco products. 

9. Explosives, firearms, equipments, 

and projectiles. 

10. Fertilizers. 

11. Inks and inking materials. 

12. Construction materials. 

13. Hardware and plumbing and 

steam-fitting supplies. 

14. Metals and metal castings and 

forgings. 

15. Oils and greases. 

16. Paints and painters’ materials. 

17. Tobacco products. 

19 * Vehicles, not including engines. 
20 Linoleum and oiled cloth. 

21. Electrical apparatus, machines, 

and supplies 

22. Games, toys, and sporting goods. 

23. Cutlery, machinery, and tools, 

and parts thereof. 

24. Laundry appliances and ma¬ 

chines. 


25. Locks and safes. 

26. Measuring and scientific ap¬ 

pliances. 

27. Horological instruments. 

28. Jewelry and precious-metal ware. 

29. Brooms, brushes, and dusters. 
.30. Crockery, earthenware, and 

porcelain. 

31. Filters and refrigerators. 

32. Furniture and upholstery. 

33. Glassware. 

34. Heating, lighting, and ventilating 

apparatus, not including 
electrical apparatus. 

35. Belting, hose, machinery pack¬ 

ing, and non-metallic tires. 

36. Musical instruments and supplies. 
3 7. Paper and stationery. 

38. Prints and publications. 

39 . Clothing. 

40. Fancy goods, furnishings, and 

notions. 

41. Canes, parasols, and umbrellas. 

42. Knitted, netted, and textile 

fabrics. 

43. Thread and yam. 

44. Dental, medical, and surgical 

appliances. 

45. Beverages, non-alcoholic. 

46. Foods and ingredients of foods. 

47. Wines. 

48. Malt extracts and liquors. 

49. Distilled alcoholic liquors. 

50. Merchandise not„.o t h e r w i s e 

classified. 


(Note: Class 18 was abolished Feb. 24, 1909.) 


An applicant for registration must specify not only the general 
class of merchandise in connection with which he intends to use 
his trade-mark, but must state also specifically the articles in 
that class upon which he has used the trade-mark he seeks to 
register. 

For instance, a manufacturer who might apply for the registra¬ 
tion of “ Pendennis,” as a trade-mark for smok¬ 
ing tobacco^—to select a word at random—would 
find that it would not be satisfactory to the 
Patent Office to state in his application that the 
mark was being used in connection with Class 17 
—“Tobacco products.” He would be required 
to state that his mark was being used on "smok¬ 
ing tobacco.” After registration had been 
granted the Patent Office, would not register 
another “Pendennis” trade-mark in that class 
of merchandise, to be used on cigars, for instance, 
for another applicant. Nor would the first 
registrant be obliged to apply for a new registra¬ 
tion if he should desire to extend the use of his 
trade-mark to cigars, or chewing tobacco, or any 



THE TRADE¬ 
MARK OF THE 
GENERAL 
ELECTRIC COM¬ 
PANY. AN EX¬ 
CELLENT USE OF 
INITIALS AS A 
TRADE-MARK. 



Trade-Names. 


13 


Registration 
involves obli¬ 
gation on the 
part of the 
registrant 


other tobacco product. The law would protect him in the use 
of the mark for all articles of that class, but the rules of the Patent 
Office require applicants to give full particulars not only as to 
class of merchandise, but the specific articles on which the mark 
has been used. 

A result of the principle of trade-mark practice which limits 
the use of a mark to one class of merchandise is to be seen in the 
same name being used as a registered mark for unrelated articles. 

The name “Pompeian,” for instance, is used as a trade-mark 
for a face cream and also for wire netting for window screens; 
“ Republic” is used for automobile tires as well as several other 
articles in different classes; “Packard” for pianos and auto¬ 
mobiles; and there is an “Ideal” hair-brush and an “Ideal” 
fountain pen. 

The law directs that the owner of a registered trade-mark 
affix, print or impress upon such trade¬ 
mark wherever it is used, or in close 
enough proximity to it to be easily seen, 
the words, “ Registered in U. S. Patent 
Office,” or the shorter abbreviated form, 
viz., “ Reg. U. S. Pat. Off. ” The trade¬ 
mark of Baker’s Cocoa—the Baker chocolate girl— 
reproduced on this page, shows how this should be 
done. 

If this notification is not used in connection with 
the trade-mark, the owner of the mark, in infringe¬ 
ment proceedings against an unauthorized user, 
cannot collect damages unless he can prove that he 
gave the other party formal notice, and that the 
unauthorized use of the mark was continued after 
notice. 

A trade-mark is not merely an advertising symbol. It is an 
Affixation essential of trade-mark validity that the mark be 
affixed to the goods. A device, or word, or phrase, 
or picture that is used only in circulars, advertisements, or on 
signs or letter-heads is not a trade-mark and cannot be pro¬ 
tected under the trade-mark laws. (It should be stated here 
that the unauthorized use of one other than the owner of such a 
device or wording may sometimes be prosecuted under the com¬ 
mon law—the law of unfair business competition.) 

A trade-mark may be printed, pasted, written, stamped, 
stenciled, branded, sewed, or woven upon the article with which 
it is used. In cases where it is not practicable to affix the mark 
upon the merchandise itself it must be affixed to the container. 



RtlU.& Patent OAc* 

A CELE- 
B R A T E D 

Trade 

MARK. 


Rules of the Patent Office 

We have not the space here to go into a detailed description 
of the procedure of the Patent Office in considering trade-mark 
applications. This procedure, especially in cases where there is 
some doubt as to the validity of the mark, is highly complicated, 




14 


Trade-Marks. 




and can be followed successfully only by a solicitor experienced 
in trade-mark practice. 

The rules of the Patent Office require applications for registra¬ 
tion of trade-marks to be made in a certain conventional form. 
A drawing of the mark, of a certain specified size, must be sub¬ 
mitted with the application. Proofs of the mark, as actually 
used, must also be forwarded as exhibits in the case. 



If, on preliminary examination, the mark appears to be 
entitled to registration, a reproduction of it is printed at least 
once in the Official Gazette of the Patent Office. This publica¬ 
tion must be at least thirty days prior to the date of registration. 
The purpose of the publication of the mark in the Official 

Gazette is to allow opposition 
from any one who thinks its 
registration would conflict with 
his rights. Opposing an applica¬ 
tion is technically called an “op¬ 
position.” An opposition serves to 
delay registration until the exam¬ 
iner in charge of interferences 
considers the evidence submitted. 

Under certain conditions, re¬ 
jected applications may, on appeal, 
be taken up to the Commissioner 
of Patents. 

Many defective applications 
fail because of a lack of competent 
advice in devising the proposed 
trade-marks, as well as because 

OP “CTo^LK,NG R ZcHm E K o£ ‘"experience in prosecuting the 

applications. 

On March 19, 1920, Congress approved an amendment to 
the present Trade Mark Law entitled an “An act to 
Act of give effect to certain provisions of the convention 

March 19,1920 for the protection of trade-marks and commercial 


names, made and signed in the City of Buenos Aires, 
m the^ Argentine Republic, August 20, 1910, and for other pur¬ 
poses, which provides, among other things, for the registration 
of geographical terms, descriptive words and phrases, and personal 
names, when they have been in bona fide use as trade-marks for a 
period of one year or more, providing other similar marks have 
not already been registered for use upon goods of the same 
descriptive’ properties. This act was provided not only to make 
it possible to register trade-marks formerly not registrable in 
the United States, but to make it possible to obtain registration in 
this country upon which to base foreign registrations. By taking 
advantage of this act many manufacturers have been able to obtain 
foreign registrations of marks which previously could not be regis¬ 
tered because the manufacturers had been unable to obtain regis* 
tration of the marks in the United States. 



CHAPTER III 


Analysis of the Requirements for Registration 

I N the preceding chapter we traced an outline of the main 
provisions of the Act of 1905—the Trade-Mark Law. We 
intend to take up in this chapter each clause of the law ap¬ 
plying to registration, and show how it works in actual practice. 

Great care should be taken by an applicant for registration 
A trade-mark °I a trade-mark, or his attorney, to avoid conflict 
will not be with a trade-mark that is already registered or 
registered if already in use (even if not registered), provided that 
in ^design C or ^ is'applied to the same class of merchandise as that 
wording with of the applicant; Lack of caution in this respect 
a known has caused interminable annoyance and litigation, 
a r iread ma !n consequent financial loss. 

usVby^n" In> considering the question of conflicting marks, 
other and the Patent Office and the Federal courts hold that 
"iodl'oMhe test similarity is whether the marks are 
fame d e* sufficiently alike in appearance or wording, or sound, 
scriptive to mislead the average individual, 
it'resemblesa The word “Autola” as a trade-mark for cigars 
knovTntracfe- was held not registrable owing to a prior registra- 
mark so close- tion of the word “Auto-do” for the same class of 
ly as to cause merchandise. In this instance, registration was 
refused on the basis of resemblance in sound as well 
as in appearance. 

“Lady Lee” having been registered as a trade-mark for shoes, 
“Lady Like” was refused registration in 
the same class. 

“Certosa” as a mark for a brand of 
flour sufficiently resembled “Ceresota”— 
already registered—to. cause its rejection. 

“Powellton” failed registration as a 
trade-mark for coal, on the ground that 
another company’s coal already bore the 
registered mark “Powell’s Run.” 

“Sodafoam” was considered close enough in resemblance to 
“Sea Foam” (already registered in the same class) to cause its 
rejection. 

“ Uno ” having been registered as a trade-mark for a medicine, 
an application for the registration of “Ino” in the same class 
was refused. 

Registration is refused a trade-mark when it consists of 
words describing a symbolic or pictorial device which has already 
been registered; or vice versa , when the -wording has been 
registered first, registration for the symbol is refused. For 

15 


NUGTEX 


ONE OF THE IN¬ 
NUMERABLE WORDS 
ENDING IN “TEX.’' 
TRADE-MARK USED ON 
BELTS 


16 


Trade-Marks. 



instance, the Patent Office has held that a trade-mark consisting 
of a conventional representation of a bouquet of flowers is 
identical in meaning with another mark consisting of the word 
“Bouquet,” applied to the same class of merchandise. In either 
case, the goods would be called “Bouquet Brand.” 

Agreement among owners of conflicting marks is not recog¬ 
nized by the Patent Office. An interest- 
ing example of this occurred in the 
attemp t to register the word ‘ ‘ N ay assett. ’ ’ 
The word “Nassac” had already been 
registered for the same class of goods 
and the registration of “ Nay assett” was 
refused on the ground of similarity. 
Soon afterward, the owner of the 
the trade-mark of ”Nayassett mark made a new applica- 
crystal domino sugar, tion, accompanied by the formal con- 
™ A T * E f T IS ™£“ sent of the owners of the “Nassac” 
resentation of a domino, niark. The Commissioner oi Patents 
or mask, includes the held that the law did not provide for 
® OF ™ E agreement between owners of con- 
flictmg marks, and the registration of 
“Nayassett” was refused accordingly. 

About two years ago a manufacturer in a Middle Western 
city became interested in a new metal polish and decided to put 
it on the market. After long consultation with advertising men 
and salesmen, a name was selected. This name was suggestive 
and short, with a snap to it, that made it stand out in the 
memory. Many thousands of labels were ordered and packages 
of the article were given to the traveling salesmen of the concern 
to • be used - in getting orders from retailers. Booklets and 
literature had been written and mailed, and the business was 
beginning to take shape, when, to the surprise of the manu¬ 
facturer and his associates, his application for trade-mark, 
registration was rejected by the Patent Office for the reason that 
the mark had already been registered. Then followed a hasty 
trip to a trade-mark attorney and a search of the Patent Office 
records was made. . Investigation of the register showed that 
the same name had been registered by an Eastern concern for 
a metal polish some years, ago. About this time a letter arrived 
from the attorney of the Eastern firm, with a statement to the 
effect that the owner of the trade-mark considered this un¬ 
authorized use of the mark an infringement and intended to take 
legal action in the matter. A month or two was spent in trying 
to make some arrangement with the Eastern concern, with the 
final result that the trade-mark had to be dropped, and some¬ 
thing new devised. 

In this case a full year was lost, and a considerable amount of 
money was wasted, by reason of the failure of this manufacturer 
to have a search made of the Patent Office records. He made 
the mistake of considering the matter of trade-mark registration a 
small detail, and trying to attend to it himself. A competent 
solicitor would have saved his fee a thousand times over in this 
case* 





Trade-Names. 


17 


A trade-mark 
consisting of 
the insignia 
of the Amer¬ 
ican National 
Red Cross is 
not regis¬ 
trable 



ANOTHER EXAMPLE OF A 
TRADE-MARK ENDING IN “o.” 
THIS IS A COINED WORD, 
MADE FROM “TEXAS” AND 
“COMPANY." 


This prohibition is not covered by the trade-mark law, but 
is one of the provisions of the Act of Congress in¬ 
corporating the American National Red Cross 
(approved Jan. 5, 1905). The act of incorporation 
states that it shall not be lawful for any person or 
corporation to use in trade, or for purpose of ad¬ 
vertisement, “the sign of the Red Cross” or “any 
insignia colored in imitation thereof,’ ’ unless such 
person or corporation was entitled to the use of such 
insignia at the time of the passage of the act. 

This exception, which was intended 
to safeguard the interests of those who 
had long used the Red Cross sign as a 
trade-mark, covers the Red Cross mark 
of the well known druggists’ specialty 
house of Johnson & Johnson, the Red 
Cross labels used on a brand of shoes 
made by Krohn, Fechheimer & Company 
of Cincinnati, the Red Cross mattress 
manufactured by a Boston concern, and a few other users of 
this device. 

The law, as it stands, is rigidly enforced in regard to all new 
trade-marks containing Red Cross devices. 

An unusual argument was made the basis of an application 
for registration of a label for a cough syrup, on which the emblem 
of the Red Cross was printed, accompanied by the words “ Red 
Cross.” When registration was refused, the applicant sought 
to amend the label by striking out the Red Cross emblem, while 
leaving the words intact. He argued that the Red Cross in¬ 
corporation act prohibited only the use of the “sign of the Red 
Cross” and not the words. The application was rejected on 
the ground that it was an attempt to evade the spirit of the law. 

A trade-mark is essentially an exclusive possession. When 
it ceases to be exclusive, it ceases to be a trade¬ 
mark, in the true sense. It is apparent, therefore, 
that an ordinary word, descriptive of the goods with 
which it is used, cannot be set aside as the exclusive 
property of any manufacturer, to the detriment of 
others producing merchandise of the same character. 
The wording of the law on this point is clear, and 
the Patent Office is strict in its interpretation. But 
despite this condition, many applications, destined 
to be rejected, are made every year for the registra¬ 
tion of descriptive marks. We give here a few 
examples of trade-marks, refused registration on the ground of 
being descriptive. 

The word “Kantleek” was refused registration as a trade¬ 
mark for a hot-water bag. The Patent Office examiner held 
that the word was composed of “Can’t” (misspelled “Kant”) 
and “Leak” (misspelled “Leek”), and that it was intended to 
convey the idea that this particular bottle could not leak. The 


Trade-marks 
that are de¬ 
scriptive of 
the goods 
with which 
they are 
used, or of 
the quality or 
character of 
the goods, 
are not regis¬ 
trable 



18 


Trade-Marks . 


RUBEROID 

(Trade Mark «c«uSPe>Of'.t£» 

ALTHOUGH THIS MARK HAS BEEN 
REGISTERED IT HAS BEEN DE¬ 
CLARED A DESCRIPTIVE WORD BY A 
FEDERAL COURT, AND THEREFORE 
NOT PROTECTABLE. 


attorney for the applicant presented an argument to the effect 
that the word was composed of two German words, “Kant” 

and “Leek,” that had meanings 
quite different from the English 
words with the same sound. This 
contention was too subtle for the 
Patent Office to grasp, and regis¬ 
tration was refused. 

The word “Naphtha,” used as 
a name for a soap with naphtha 
as an ingredient, was held to be 
descriptive, and therefore not 
registrable as a trade-mark, to the exclusion of the goods of 
other manufacturers, although the owner had advertised it 
extensively. 

“Mello” as a mark for chewing-gum was considered descrip¬ 
tive, being simply a misspelling of the word “mellow.” 

Many applicants for trade-mark registration seem to think 
that the mere misspelling of a descriptive word, or some fanciful 
device in lettering, will remove the word from the descriptive 
class. This is a belief that has no basis in fact, for no matter 
how a word is spelled or lettered, it is descriptive if it conveys 
information of a descriptive character. 

For instance, the word “Bestok” was rejected as a mis¬ 
spelling of “Best Stock”; “Unxld” as a misspelling of “Un¬ 
excelled ”; “ Kid Nee Kure ” as a misspelling of ‘ ‘ Kidney Cure ’ ’; 
and “Pittsburgh Pump,” printed with hyphens between the 
letters—P-I-T-T-S-B-U-R-G-H P-U-M-P—was refused registra¬ 
tion as being both descriptive and geographical. 

The courts have held that the word “Elastic,” used to desig¬ 
nate drawers having an elastic seam, 
is descriptive, but the same word is 
used in a fanciful sense and is valid as 
a trade-mark when applied to sectional 
M jl bookcases. 

✓lOllieS A manufacturer of hooks and eyes 
a clothing trade-mark. *PJ> U « d , registration of the phrase 
the misspelling of the Bust i Never! as a trade-mark. 
phrase “young fellow” Registration was refused, as the mark 

value N a°s T a ,N tr R a E d A e SE mark S ™ as f 1 ?* ,d , to , be descriptive, indicating 
its eligibility for regis- that the hooks and eyes would never 

TRATION WOULD BE THE TUSt. 

SAME IF IT WERE correctly Arbitrary numbers are obviouslv 

SPELLED AND PRINTED IN . / . , ” uumuus aiC UUVIUUMy 

ordinary type. registrable as trade-marks, but the 

applicant must be prepared to establish 
his contention that the numbers are really arbitrary and meaning¬ 
less. In certain trades numbers are used to designate grades of 
a product common to the trade, and, in that case, the grade 
numbers are descriptive by common usage. A plow manufacturer 
applied for registration of the symbols “A No. i,” “No. i ” and 
“AX No. i,” as trade-marks for plows. It was shown, upon 




Trade-Names. 


19 


examination, that these symbols are used by many plow makers 
to designate grades, and- they were, therefore, ordinary descrip¬ 
tive trade terms.. Registration was refused. 

The prohibition against trade-marks descriptive of the 
character or quality of the product applies with equal force to 
trade-marks descriptive of the container or package. A flour 
manufacturer put up his product in barrels of a distinctive 
character—white and dark staves alternating. He applied for 
registration of a mark consisting of a pictorial representation of 
the striped barrel. This mark was considered descriptive, and 
registration was refused. 

A Philadelphia candy manufacturer applied for registration of 
the word “Fussy,” as used in the phrase “A fussy package for 
fastidious folk.” The Patent Office held that the word “fussy,” 
as used in the phrase, was merely a descriptive term—an 
adjective qualifying “package”—and registration was accord¬ 
ingly refused. 

The word “Spearmint,” being a descriptive word, was re¬ 
fused registration as a trade-mark for Wrigley’s Spearmint 
chewing gum, but the representation of a spear was considered 
registrable. 

Various applicants have sought registration for trade-marks 
that, while they are meaningless to English-speaking people, are 
really descriptive terms taken from foreign languages. Such 
words are not registrable, for the Patent Office makes no dis¬ 
tinction between languages. 

The phrase “Lait de Violettes,” meaning in French “Milk of 
Violets,” was rejected as a mark for per- f ^ 

“ Elegancia, ” the Spanish equivalent 
of the English word “Elegant,” was re- 

fused registration as a trade-mark for it is not generally 
cigars. known that this is an 

A descriptive word in a language as 
little known as Esperanto is neverthe¬ 
less unregistrable. “Saniga” means “Sanitary” in Esperanto, 
and it has been accordingly refused registration on the ground of 
being a descriptive term. 

In considering the question of descriptive marks, the differ¬ 
ence between description and suggestion should not be overlooked. 
Suggestiveness is a highly desirable quality in a trade-mark, and 
many excellent and legally valid marks ^ 
are suggestive. 

The name “Hydegrade,” a regis¬ 
tered trade-mark, applied to a well- ___ 

known fabric, is suggestive of high A well -known trade- 
quality, but it is not descriptive. It mark, another example 
is a coined word, composed of the of the large numbers of 
elements “Hyde” (name of owner) and ^wifo^S™ 0 ° F W ° RD8 
“Grade.” 

Another example of an excellent suggestive mark is 
“Rubdry” applied to towels. 


*9 


ARBITRARY WORD. REGIS¬ 
TERED AS A TRADE-MARK. 




20 


Trade-Marks. 


Pictorial marks-are often highly suggestive without being 
descriptive. The Baker Chocolate girl, depicted in the act 
of serving a cup of cocoa, suggests daintiness, taste, beverage, 
quickness in serving, and refreshment. 

The word “Ideal," used in connection with a fountain 
pen, is considered fanciful, and not descriptive. It would 
seem that a very fine distinction is made here, as this word 
is an ordinary descriptive word, commonly used to express 
a state of perfection, as in the expression “An ideal day.” 
It may be said, on the other hand, that nothing ever reaches 
an ideal condition, and, in that sense, the mark may be con¬ 
sidered fanciful. 

Geographical names, like descriptive terms, are the common 
A eo a h P ro P ert y °f a ll who use the language. No one 
icafnameor manufacturer can appropriate such a term for his 
term is not own exclusive use as a trad.e-mark unless he uses it 

aTrade mark * n an ar bi trar y or fanciful sense. The only excep- 
a ra e-mar t j ons to this principle are to be found in the case of 
manufacturers who have adopted geographical terms as their 
trade-marks and have used them so long, without opposition or 
protest, that they have acquired a common law right to their 
exclusive use. 



Among the geographical marks rejected by the Patent Office 
are the following: 

“Yale." applied to hosiery; “Cloverdale," for canned fruits 
and vegetables; “ Red River Special" as a mark 
for agricultural implements; and “Aurora," on 
shoes—the name “Aurora" being applied to 
localities in at least twenty states of the 
Union. 

It would seem in the light of common-sense, 
that in the last-named case (that of “Aurora”) 
A— the ruling of the Patent Office is on a very narrow 
basis indeed. The word “Aurora" has no 
geographical significance to the average person. 
.It calls up a mental image of the dawn. If this 
case, and some others like it, are considered valid 
precedents, every applicant for trade-mark 
registration must be prepared to submit his ap¬ 
plication to the stem criticism of the Post Office 
Directory, with its catalogue of fifty thousand or 
more names. (It is interesting to observe that, 
in a later case, the Patent Office allowed the 
registration of “Aurora" as a trade-mark for oils, 
lard, syrup and honey. Aspegren & Co., ex parte, ioo Official 
Gazette, 684.) 

“Tabasco" was refused registration as a mark for a sauce on 
the ground that it is a geographical term. Tabasco being the 
name of a state in Mexico. 


s. ppX- 0< 


A GOOD EX¬ 
AMPLE OP THE 
USE OF A SUG¬ 
GESTIVE SYMBOL 
AS A TRADE¬ 
MARK, USED IN 
CONNECTION 
WITH BAY STATE 
BRICK AND CE¬ 
MENT COATING. 


“ French ” was rejected as a trade-mark for paint. On the 
other hand, “Celtic" has been registered as a trade-mark for tea 





Trade-Names. 


21 


The word “Celtic” has reference to a race, of which the Irish are 
only one branch. It is not applied to any particular country or 
section of the globe. 

The map of the United States has been refused registration 
as a trade-mark for sugar. 

“American Lady” was refused registration on the ground 
that the word “American” is geographical. 

When a geographical term, applied to merchandise, is used in 
a fanciful or arbitrary sense—that is, 
when it conveys no deception in regard 
to the origin of the merchandise—it may 
be registered as a valid trade-mark. 

“Dublin” is a valid trade-mark for 
soap, although the soap is made in 
America. In the case concerning this 
mark it was shown that it is the practice THE trade-mark of the 
of soap manufacturers to call their S™“E ““S™ 
products Limerick, Scotch, coined word, made up 
“ Irish,” etc., and that the buying public from the first letters of 
is aware' of the fanciful use of these cern’s name. 1N ™ B CON * 
names and is not deceived thereby. 

“Vienna,” applied to bread, is considered valid. No one 
expects bread made in Vienna to be sold in America, consequently 
no one is deceived by this fanciful use of the word. 

“Gibraltar” is registered as a trade-mark for belting. It is 
true that Gibraltar is a geographical name, but its suggestive¬ 
ness in regard to belting conveys the mental picture of strength, 
rather than the idea of origin. 

The student of trade-mark conditions, having learned how 
rigorously the Patent Office interprets the section of the law 
applying to the registration of geographical terms, will perhaps 
be puzzled by the number of trade-marks of this class which seem 
to be valid and well-established. 

The explanation of that is that many geographical names, 
which could not have been protected 
ab origine as trade-marks, have ac¬ 
quired a secondary meaning by long 
and exclusive use by a particular manu¬ 
facturer. Such marks fall within the 
protection of the common law. 

Some of these common law marks are A geographical name 
registered under the ten years’ clause. S E C R L E A E ' under the ten- 

Among well-known geographical 
trade-marks may be mentioned “Bristol” applied to fishing- 
rods; “Kalamazoo” applied to stoves; “Manhattan,” the name 
of a brand of shirts; and “Elgin,” “Waltham,” and “Illinois,” 
the names of watches. 

The U. S. Sanitary Manufacturing Co. was refused registra¬ 
tion for a trade-mark consisting of the letters “ U.S. ” with a back¬ 
ground of a shield similar to that of the conventional United 
States shield. 



Bait Rods 







22 


Trade-Marks. 


The coat of arms of the United States is not registrable as 
A trade-mark a trade-mark even under the ten years’ clause. It 
must not con- has been held that its use in that connection is 
sistoftheflag opposed to public policy. (American Glue Com- 
armsor other pany, ex parte , 120 Official Gazette, 324.) 
insignia of The registration of the coat of arms of the state 
the United c f Maryland was refused registration, application 
any ^state, or having been made under the ten years ’ clause, 
municipality, In another case, registration of a simulation of 
? r t* an th SimU f *he shield United States, with alternate red 

a ion ereo anc j white stripes, was refused registration. 

It would seem at first consideration that if the object of using 
v a trade-mark is to indicate the origin of a com- 
A trade-mark modity, the most effective mark would be simply the 
sists 1C merely ma ker’s name—“James Brown” for goods made by 
of the m name James Brown, and “William Jones” for goods made 
of anindivid- by William Jones. 


ual, firm or 



THIS TRADE-MARK OF A JELLY 
POWDER IS A COINED WORD, MADE 
BY SPELLING THE PROPRIETOR’S 
NAME “HANSEN” BACKWARDS 


3y William Jones. 

corporation This logic would be indisputable if there were a 
can P be < regis- different family name for every individual. But 
teredonly on names are limited in number—there are eleven 
ditions con * P a S es Smiths in the New York City Directory— 
and every man has a natural and inalienable right 
to use his own name. It is obvious that a family name lacks 
the exclusiveness that is an essential quality of a legitimate 
trade-mark. 

But a personal name may be written, or printed, or stamped 

in such a way that the peculiarities 
of writing, or printing, or design, 
may dominate the name and be 
the most conspicuous feature of 
the combination. 

The trade-mark Act provides 
that “no mark (shall be regis¬ 
tered) which consists merely in 
the name of an individual, firm, corporation, or association, not 
written, impressed or woven in some particular or distinctive 
manner, or in association with a portrait of the individual.” 
In this clause the framers of the Act have endeavored to put a 
logical restriction on the injudicious use of personal names as 

trade-marks and the endless 
litigation that has always rc- 
' suited from this practice. 

The names of historical 
personages (not living) may be 
statute this way of phesenting rc g is tered as trade-marks, but 

the name of a living person 
cannot be used without his 
consent. 

The phrase “Gibson Girl” 
as a mark for shoes was re¬ 
fused registration, as the word “ Gibson ” obviously referred to 
Charles Dana Gibson, a living artist. 


*Giltcttc> 


THE NAME “GILLETTE” IS CONSIDERED 
DISTINCTIVE. NOTE THAT THE DEVICE 
DOMINATES THE NAME, AND PUTS IT 
INTO A POSITION OF RELATIVELY 
SECONDARY IMPORTANCE. 













Trade-Names. 


23 


In ease of the registration of names of individuals, firms or 
corporations the restriction of the law that the name must be 
shown in some “particular or distinctive manner” has been 
interpreted to mean a presentation of the name in such a 
form that the peculiarities of lettering, or writing, or of an 
accompanying device are so pronounced that they dominate 
the name and throw it into a position of secondary importance. 
The meaning of this clause is best shown by means of examples 
of proper names, registered and used as trade-marks. A 
number of trade-marks of this character may be found in this 
book. 


a living indi¬ 
vidual is not 
registrable as 
a trade-mark 
unless the 
application is 
accompanied 
by the writ¬ 
ten consent 
of the person 
whose por¬ 
trait is used 



Many portraits of living persons are used as trade¬ 
marks—notable among them being the face of W. L. Douglas, 
A portrait .f shoe manufacturer; and the 
* " portrait ot ihomas A. Edison, 
used in connection with his 
facsimile signature, as a trade¬ 
mark for Edison phonographs. 

Among historical char¬ 
acters the picture and signature 
of Robert Burns, the poet, are 
combined in a trade-mark for 
cigars; the face of Benjamin 
Franklin is used as a trade¬ 
mark for the Saturday Evening Post, and 
‘will be found printed on the editorial page 
of each issue; Bismarck is a name for 
collars; Napoleon is used in connection 
with a brand of flour; and “ Bob” Ingersoll 
is the trade-mark of a cigar. 

It is a definite principle of the common 
law that fraud vitiates any transaction 
that it touches. A trade-mark that is deceptive and misleading 
cannot be protected, no matter if its registration should be 
accomplished. 

“ Knights of Labor” was refused registration as a trade-mark 
for whiskey, as the evident intent of the mark was 
to mislead purchasers into a belief that the whiskey 
was produced by the Knights of Labor, a labor 
organization. 

A similar case is exhibited in the attempt to 
register the name “Masonic” as a mark for cigars. 
Registration was refused. 

The name “Malt Myrrh” was refused registra¬ 
tion as a trade-mark for malt liquors when it was shown that the 
liquors did not contain myrrh. 

The name “Old Country Soap,” used in connection with soap 
in such a way as to lead purchasers to believe that the soap was 
manufactured in Europe, was held by the court in the case of. 
Wrisley v. Iowa Soap Company to be deceptive, and protection 
against infringement was refused. 


BEG. U. S. PAT. OFF. 

THIS PORTRAIT OF 
BENJAMIN FRANKLIN 
IS THE TRADE-MARK 
OF THE SATURDAY 
EVENING POST. 


A trade-mark 
is not regis¬ 
trable if jt 
conveys in 
any way a 
misrepresen¬ 
tation of the 
article 



24 


Trade-Marks. 



AN AUTOMOBILE 
TRADE-MARK. 


A false representation on a trade-mark to the effect that the 
article is patented when it is not, is sufficient to vitiate the trade¬ 
mark. 

A trade-mark registration does not protect when it is used on' 
an article different in character, or com¬ 
position, or origin, from that for which 
it was registered. This principle is very 
important. A manufacturer cannot do as 
he pleases with his trade-mark without 
regard to the rights of the public. If the 
article for which it was registered is changed 
essentially in composition, or in purpose, 
the trade mark ceases to be of value. 
Trade-marks under the United States law 
are always specific and associated with a 
certain definite article , and not with the proprietor’s general 
business. 

In Great Britain and Canada there are general trade-marks , 
which a manufacturer may use on any article he makes, no matter 
to what diverse classes these articles belong. 

A trade-mark which is technically a valid mark, will be 
refused registration if, in the opinion of the Patent 
Office, its registration would be opposed to public 
policy. A few examples will show what we mean. 
The phrase “Ask the Revenue Officer” was re¬ 
jected as a mark for whiskey. The Patent Office 
held that this mark, appearing on bottles or 
barrels, would lead the public to believe that the 
contents had the indorsement of officers of the government. 

For a similar reason the word “Government” was refused 
registration as a mark for loose-leaf binders. 

The name of a living Ex-President cannot be registered with¬ 
out his written consent (as in the case of any other living person), 
and the name of an Ex-President, not living, cannot be registered 
at all. The use of the name of an Ex-President as a trade-mark 
is not considered consonant with the high dignity of the Presi¬ 
dential office. 


A trade-mark 
is not regis¬ 
trable if its 
registration 
would be 
against public 
policy 


Several applications have been made within the last few 
years for registration of the names or portraits of Ex-Presidents. 

The signature and portrait of Thomas Jefferson, combined in a 
trade-mark for cigars, was refused registration. 

The words “Roosevelt Rose” were rejected on application 
for registration, the rejection‘being partly because “Rose” had 
been registered on a previous application, and partly because 
Roosevelt is a living person. 

A trade-mark cannot be a color, because the number of colors 
Other is limited, and it would be manifestly unfair to give 

Restrictions the exclusive use of a color to any individual. 

The use of the flag or coat of arms of any foreign power is 
prohibited as a trade-mark. This restriction holds even when 
the foreign power agrees to the use of its insignia. The 



Trade-Names. 


25 


■0 


Russian government consented to the use of its coat of arms 
as a trade-mark in the case of an applicant before the United 
States Patent Office, but registration 
was refused. The law is mandatory, 
and is not affected by agreement. 

Any design or picture which has 
been adopted by a fraternal society as 
its emblem is not registrable as a T ™ 

trade-mark. “o”— such as crisco, omo, 

For obvious reasons, scandalous or onoto, quixo, pebeco— 
immoral matter is refused registration. 

A trade-mark cannot be a shape, or tinctiveness 
a package, or a container. 

A trade-mark cannot be the article of merchandise itself, 
for the “mark” must necessarily be different from the thing 
marked. 





CHAPTER IV 

The Elements of a Good Trade-Mark 

T HE reader who has perused the preceding pages devoted to 
a discussion of what a trade-mark cannot. be, begins to 
wonder, perhaps, what part of the language is left unre¬ 
stricted. 

It is true that the number of restrictions imposed by the law 
and the courts is considerable, but the language is virtually 
inexhaustible, with its infinite possible combinations of letters 
and words. And to these possibilities of construction must be 
added the limitless varieties of designs and symbols which are 
registrable and valid under the law. 

A trade-mark may be: 

A coined word , like Calox, Coca-Cola, Omo, Jap-a-lac, 
Crisco, Pebeco, Celluloid, Plexo (a trade¬ 
mark for suspenders; also for a toilet 
preparation), Sapolio, Cravenette, Jell-O, 

Kodak, Uneeda, Pro-phy-lac-tic, Crex 
and Quixo. 

A symbol, like the Baker chocolate j 
girl; the Prudential Insurance Com¬ 
pany’s trade-mark, which consists of a 
picture of the Rock of Gibraltar; the 
Merrimack duckling; the spear of 
Spearmint chewing gum; the Puritan 
painter, used on Bay State brick and 
cement coating; the Ford automobile „T HE , R0CK OF GIBRA- t TAR 
mark, consisting of a winged pyramid; mark of the prudential 
or the representation of a mask or insurance company, it 
domino, .used on packages o£ Crystal m 

DommO sugar; or the painter boy of conventional trade -MARK 
the National Lead Company. form. 

A combination of a word, or words, and a symbol, like Thomas 
A. Edison’s portrait and signature, used 
in connection with phonographs; a picture 
of a black cat and the words “Black Cat,” 
used as a hosiery trade-mark; the trade¬ 
mark of the Vacuum Oil Company, con¬ 
sisting of a picture of a gargoyle in con¬ 
nection with the word “Gargoyle”; or a 
representation of a swan accompanied by 
the word “Swan,” used on fountain pens. 

A portrait, like Mennen’s Talcum Powder mark, which is a 
picture of Gerhard Mennen; or the portrait of Robert Burns, 
used on cigars. 



6 


A TRADE-MARK OF 
THE VACUUM OIL COM¬ 
PANY. 


26 





Trade-Names. 


27 


THE TRADE¬ 
MARK USED ON 
HE1SEY GLASS- 
WARE. 


A word, or words, used in a fanciful {non-descriptive) sense, 
like “Cat’s Paw,’’ a trade-mark for rubber heels; “Bachelor’s 
Friend,’’ a suggestive trade-mark for hosiery; the word “Ribbon,” 
a mark for a tooth-paste; “ Republic, ” used on automobile tires; 
“Velvet,” a trade-mark for smoking tobacco; “Onyx,” the 
trade-mark of a well-known brand of hosiery; “Ivory,” which 
stands for a famous brand of soap; “Diamond,” a name for 
tires; “Arrow.” used on collars; “ Blue-Jay, ” a trade-mark for a 
corn-plaster; “Big Ben,” used on alarm clocks; “Lifebuoy,” 
the name of a soap; or “Occident,” the name of a flour. 

A historical or mythological character, like Juno, King William, 

- Stonewall Jackson, Cupid, Venus (there is a 

VV lead pencil carrying this trade-mark), Samson 

X (applied suggestively to a brand of rope), or 

X I Apollo (the name of a piano-player). 

■■■ V Initials or arbitrary numbers, like the “G.E.” 

■ I X trade-mark of the General Electric Company; 

X the number “4711,” applied to perfumery and 
toilet articles; “61,” a floor varnish; “ E-Z,” 
the suggestive trade-mark of jar used in preserv¬ 
ing fruits; “O.K.,” the name of a clip to hold 
papers together; “B.V.D.,” the trade-mark of 
a well-known line of underwear; or the big “H” . 
enclosed in a diamond-shaped design, used as a trade-mark on 
Heisey’s glassware. 

The business name of person, firm or corporation when written, 
printed, impressed or woven in a distinctive manner, 
or in association with a portrait, or in an auto¬ 
graphic form. An example of this type of trade¬ 
mark is the word “Cross,” reproduced here. 
The name “Gillette,” used on safety razors, is 
enclosed in a diamond and crossed by an arrow. 
A well-known trade-mark of this character is 
the name “Stewart Hartshorn,” found on most 
shade-rollers. 

Marks that may be technically defective are registrable under 
the ten years' clause if they have been in exclusive use by the ap¬ 
plicant for ten years preceding 1905. The word “Faultless,” 

registered by E.Rosenfeld & Com¬ 
pany, of Baltimore, as a trade¬ 
mark for garments, belongs to this 
class. “Faultless” is, of course, 
descriptive, but it is nevertheless 
registrable under the ten years’ 
clause. Another mark of the same 
kind consists of the word “Cow¬ 
ard”—a trade-mark for shoes. 
Coward is the proprietor, and un¬ 
der the Act of 1905 his name has no eligibility as a trade-mark 
unless it is written or printed in a distinctive manner. But his 
name has been used as a trade-mark since 1868, and, conse¬ 
quently, falls within the provisions of the ten years’ clause. 




A VERY EFFECTIVE TRADE-MARK, 
USED WITH BISCUITS SOLD IN 
PACKAGES, 





28 


Trade-Marks. 


It is easy enough to devise a trade-mark that will comply with 
the’letter and the spirit of the law. But a trade-mark should 
be something more than merely registrable and protectable. 
Think of the immense advertising and selling effort that must 
be brought to bear to overcome the inertia of a meaningless or 
unsuitable trade-mark. 

The Nine A proposed trade-mark should not be adopted 
Desirable until every one of the following questions can be 
Trade-Mark answered affirmatively in regard to it: 

1. Is it easy to speak? 

2. Is it easy to remember? 

3. Is it easy to spell? 

4. Is it simple in design? 

5. Is it attractive in sound and appearance? 

6. Is it suggestive of the good qualities of the merchan¬ 
dise? 

7. Is it different from other trade-marks of the same 
class ? 

8. Can it be affixed to the goods with which it is to be 
used? 

9. Is it registrable and protectable? 

Few trade-marks in commercial use can stand these tests, 
because most marks have been designed without any clear per¬ 
spective of the part they were to play in business. 

As a matter of interest and instruction, let us take several 
well-known trade-marks, at random, and put them through the 
list of test questions. 

Opening a current magazine, the first trade-mark we see is 
“Postum,” the name of a substitute for coffee. Postum is easy 
to say and remember and spell. It 
is simple, but not particularly attrac¬ 
tive in sound. It has no suggestive¬ 
ness, except the artificial suggestive¬ 
ness of familiarity. It is distinctive, 
registrable, and is virtually infringe¬ 
ment-proof. If the figure 100 should 
be set down as denoting a perfect 
trade-mark, then Postum should be graded at about 80. It 
wholly lacks suggestiveness, and it is not attractive though not 
displeasing. 

The next mark that attracts our attention in this magazine 
is “Siwelclo,” a coined word, applied to a flushing device used 
in connection with bathroom toilets. Siwelco is not easy to 
pronounce, it is not euphonious, it is not easy to remember or 
to spell. It is the reverse of attractive in-sound, and it carries 
no suggestiveness. It is registrable and protectable. 

The next trade-mark is “O.K.,” applied to paper fasteners. 
This mark, possesses every good feature. It is suggestive in the 


WOLF’S 



HEAD 


A TRADE-MARK FOR LUBR1 
CATING OIL. 




Trade-Names. 


29 


sense that “O.K.” means, in ordinary speech, “all right, satis¬ 
factory, good.” These fasteners are used in offices. The symbol 
“O.K.” has a distinct meaning in commercial language. We 
are of the opinion that “O.K.” used as a trade-mark for office 
supplies should be graded ioo. 

“Cat’s Paw,” a trade-mark for rubber heels, is the next. 



THE FORD AUTOMOBILE 
TRADE-MARK—A PYRAMID 
WITH WINGS- 


It is an example of a word that is suggestive in the wrong way. 
“Cat’s Paw” suggests the soft,, quiet tread of a cat—and of 
rubber heels. At first glance it would seem that “Cat’s Paw” 
is an ideal name: But those who sell rubber heels say that the 
noiseless tread (or “sneaky walk,” as one shoemaker stated it) 
is the greatest of all drawbacks to the sale of rubber heels. In 
short, the name is suggestive, but suggests a defect. 

The next trade-mark that comes to hand is the Ford auto¬ 
mobile mark, reproduced on this page. 
It should be noted at the start that the 
mark as it stands, with the phrase 
“The Universal Car” as a part of it, is 
not registrable, as it contains a de¬ 
scriptive phrase. The rest of the de¬ 
sign is registrable, and, after registra¬ 
tion, the descriptive phrase might be 
imposed upon it without destroying its validity. 

In considering this mark the reader should bear in mind that 
an automobile trade-mark must be of such character that it 
can be worked out in metal and attached to the front of the 
radiator. The Ford device is suited to this form of affixation. 

This trade-mark shows a pyramid with wings. Its symbolism 
is the pyramid for strength and solidity, and the wings for speed. 
Speed and solidity —two desirable qualities in an automobile. 
The symbolism is not apparent until explained, and the mark 
is rather meaningless to the ordinary observer, but, considering 
the restrictions that surrounded its creation, we are of the 
opinion that it is a very good trade-mark. 

Next we come to “ Ralloc,” which is the trade-mark of a 
collar-retainer. The word is obviously the word “Collar” 
spelled backward. It is not euphonious, or attractive, or dis¬ 
tinctive in any way. This mark is 

B an exam P^ e a l ar g e class of trade- 

mar k s which bears upon them the evi- 
dences of only one purpose—and that 
is, to produce something which will 
not be rejected by the Patent Office. 

“Crex” is an excellent trade-mark. 
Itisan adaptation of the word “Carex,” 
which is the botanical name of a sedge¬ 
like grass which may be woven into a 
fabric. Dropping the “a,” we have “Crex.” This name sticks 
in the memory; it is easy to spell, easy to say, and is quite dis¬ 
tinctive. It lacks inherent suggestiveness, but it is the kind 
of word that may be readily popularized by advertising. 


A REGISTERED TRADE¬ 
MARK WHICH IS SO SUG¬ 
GESTIVE THAT IT APPROACHES 
WITHIN A HAIR’S BREADTH 
OF BEING DESCRIPTIVE. 










30 


Trade-Marks . 


There is a toilet preparation widely advertised and sold under 
the name “Sempre Giovine,” meaning “always young.” This 
trade-mark must be a tremendous drawback to the success of 
the article with which it is associated. It cannot be pronounced 
properly except by those who have taken lessons; and it is 
difficult to remember. To an English-speaking person it con¬ 
veys no suggestion. Foreign words should be avoided in de¬ 
vising trade-marks. People do not like to ask for things by 
names which they cannot pronounce. 

The trade-mark affixed to the linens sold by McCutcheon, 
of New York, a store famous for the quality of its fabrics, con¬ 
sists of the picture of an old-fashioned spinning-wheel, without 
wording. This is a very good trade-mark. It brings up a 
mental picture of the slowly-wrought hand-woven linens of our 
grandmothers’ time, fabrics that looked good and wore well. 

There are trade-marks so admirably, adapted to their pur¬ 
pose that they seem to be the work of genius. “Uneeda,” 
applied to crackers in a sealed package, is such a trade-mark. 
“ Rainbow;” a trade-mark for dyes, is another happy inspiration. 
This name makes one think of the fine colors and delicate tones 
of a rainbow. It stimulates the idea that these dyes emulate 
a rainbow in beauty. “ Skidoo”—a trade-mark used in connec¬ 
tion with a small gasoline engine for launches—is another trade¬ 
mark that touches the top notch of merit. It suggests agility 
and lightness, and the ability to get in motion and scurry away. 

Special Notice 

An enormous waste of mental effort expended by manufac¬ 
turers and their representatives in devising unsatisfactory trade¬ 
marks might be avoided by consultation with us—either per¬ 
sonally or by mail—before any work is done in the way of 
devising a* mark. 

There are more than 40,000 registered marks in existence, 
and approximately 100,000 unregis¬ 
tered trade-marks that have been 
used long enough to be capable of 
protection under the common law. 

One can see that the chances are large 
of a new trade-mark user deciding 
upon a mark that is already in use. 

Many marks are sent to us to be reg¬ 
istered on which it is evident that 
much thought has been expended, 
but which are so nearly like other marks already in existence 
that their registration and protection are impossible. 

A search of the Patent Office files, for which we charge only 
$5*oo, generally saves many times its cost in mental work and 
vexation. 



TRADE-MARK OWNED BY 
THE KALAMAZOO SUSPENDER 
COMPANY IT IS A COINED 
WORD, THE ELEMENTS OF 
WHICH ARE TAKEN FROM THE 
NAME “KALAMAZOO.” 



CHAPTER V 

The Trade-Mark Work of Munn & Company 

T HE firm Munn & Co. began practice as patent attorneys 
before the Civil War, and for seventy-five years it has been, 
engaged in this work. 

During our two generations of service the law of trade-marks 
and unfair trade has grown from a thin trickle of judicial deci¬ 
sion to a wide stream of statutes and precedents. We have kept 
track of the formation of this large body of law, and have assisted 
in some measure, in shaping it. 

Sixty-five years ago thefe were probably not more than, a 
thousand trade-marks in- existence in the 
United States. To-day, 'the registered 
trade - marks alone number above one hun¬ 
dred and forty-eight thousand. 

Knowledge is only accumulated by ex¬ 
perience, and we believe that we are justi¬ 
fied by the facts in saying that we have had 
a larger and longer experience in Patent 
Office work than any other firm of patent 
solicitors. 

We are entitled to practice before the 
Patent Office in cases concerning trade¬ 
marks as well as those relating to patents. 
Our work in this connection includes pre¬ 
liminary searches of the Patent Office files; 
registration of marks; and the conducting 
of opposition, interference and cancellation 
proceedings. 

Our fees for trade-mark service aret. 

For registration of a trade-mark (if there is no opposition), 
$45.00. To this fee should be added the government fee of $10.00 
for registration, making the total cost of registering a trade-mark, 
$ 35 . 00 . 

If the mark includes a special design, an additional fee of $ 5 . 00 , 
to cover the expense of preparing the drawing, is charged. 

For preparation of a design, or devising a trade-mark, where 
the idea is our own, we charge a fee based on the time and labor 
involved. 

For search of the Patent Office files, our charge is $ 5 . 00 . This 
search should always be made- before an application for registra¬ 
tion is filed. 

After an application has been filed for registration, an exam¬ 
ination is made by the Patent Office, for the purpose of ascertain¬ 
ing whether or not the application is’anticipated. If the Trade? 



THE CORTICELLI 
SILK TRADE-MARK. THE 
CAT’S HEAD IS PRINTED 
ON A LABEL PASTED ON 
THE END OF EVERY 
SPOOL. 


31 


32 


Trade-Marks. 


Mark Examiner in the Patent Office refuses to register a trade¬ 
mark, an appeal may be taken to the Commissioner of Patents. 
If he reaffirms the Examiner’s decision, another appeal may be 
taken to the Court of Appeals of the District of Columbia. 

For conducting appeals our fee is based on the circumstances 
of the case. 


It may happen that you have applied for registration of a 
trade-mark essentially similar to that of 
another registrant or applicant. In such 
a case the Commissioner of Patents is SCIENTIFICAMERICAN 
authorized to institute what are called 

“Interference Proceedings,” for the pur- the titles of period- 

pose of ascertaining who is the rightful 

owner. If you are dissatisfied with the registration. 

decision of the Examiner of Interferences, 

by whorh the inquiry is conducted, you 

may appeal to the Commissioner in person; and from his 
decision you may appeal further to the Court of Appeals of the 


District of Columbia. 

A registered trade-mark can be assigned only in connection 
with the good-will of a business in which the mark 
TMark* i s use( b The assignment must be recorded in the 
r United States Patent Office within three months of 

its date, otherwise it is void as against any subsequent innocent 
purchaser for a valuable consideration. The Commissioner 
of Patents is required to keep a record of such assignments. 
The usual fee for preparing and recording an assignment is 
$5-oo. 

Delays in registering trade-marks are often caused by the 
failure of trade-mark owners to supply us readily 
NeecU*i at B<S with all the information necessary to formulate an 
fore an Ap- application for registration in proper form, 
plication for If you are contemplating the registration of a 
Can^^3e & Pre- mar ^> note carefully the following data which must 
pared. be supplied. 


X. Name of the owner of the trade-mark. 

2. If the owner is a corporation, the State in which it has been 
incorporated; if a firm, the names of the members thereof. 

3. Residence of the owner. 

4. Place of business of the owner. 

5. Nationality of the owner. 

6. Whether the mark is used in interstate or foreign commerce 
or commerce with the Indian tribes. 

7. Class of merchandise on which the mark is to be used, and 
the particular description of the goods comprised in that class. 
Thus, the applicant must not state merely that a mark is to 
be used with “Shirts,” but should be more specific, and state 
whether the shirts are outer or under garments, and of what 
material they are made. 

8 A statement of the manner in which the trade-mark is applied 
to the goods. If by means of labels, six copies of the label 
should be furnished; if otherwise, six specimens of the mark 
.as usually affixed. 

As nearly as possible the earliest date on which the mark was 
used. 


9 



Trade-Names. 


33 


10. 


11. 


Whether or not the mark is registered in any foreign country; 
and, if so, the date of registration or of the application for 
registration. 


in Foreign 
Countries 


If the applicant be not. a resident of the United States, the 
name and address of some person residing in the United 
States upon whom process may be served or notice of pro¬ 
ceedings affecting ownership. (If desired, we can appear on 
the Patent Office records as the representative of a foreign 
registrant upon whom papers may be served.) 

Many American manufacturers and exporters do not realize 
the importance of registering their trade-marks in 
Registration the foreign countries to which their goods are sent. 

Knowing only the trade-mark laws of the United 
States, where the title is derived from first use and 
is confirmed by registration, they often wait until it is too late 
before attempting to comply with the registration laws in other 
countries. 

A fundamental difference between the trade-mark laws of 
the United States and those of Germany, Austria, Hungary, Argen¬ 
tine Republic, Bolivia, Brazil, Chili, China, Paraguay, Peru, 
Venezuela, Uruguay, Costa Rica, Guatemala, Denmark, 
Finland, Norway, Sweden, Spain, Japan and Cuba, is that in the 
foreign countries named the first to register a trade-mark acquires 
the property therein, to the exclusion of the rightful owner. 

In many other countries the registration is, after a short period, 
also conclusive proof of ownership. American exporters will, there¬ 
fore, see the importance of registering their marks in the foreign 
countries to which they send their goods. 

We are prepared to register American marks in any country 
that has made provision for the registration of foreign-owned 
marks. Upon application, we will send a list of fees for regis¬ 
tration in each country. 

Our organization is complete in every particular. We have 
a highly trained staff of trade-mark specialists which 
Facilities we P* ace at the service of our clients. Our office in 
Washington, located near the Patent Office, gives 
us unsurpassed facilities for rapid and accurate work. We are 
always in close touch with new trade-mark developments through 
being on the ground, and being engaged in daily practice before 
the Patent Office. 

Under the present law those applications for the registra¬ 
tion of trade-marks which have been passed and 
Opposition allowed are published in the Official Gazette, and, 
Proceedings within thirty days after the date of publication, 
any person who believes he would be damaged by 
the registration of a mark may oppose its registration by filing 
notice of opposition thereto. The opposer need not be the 
owner of a registered trade-mark, but, if registration is sought 
by another for a trade-mark so closely resembling one in use by 
the opposer on goods of the same descriptive properties as to be 
liable to cause confusion or mistake in the minds of the public 
or to deceive purchasers, the registration of such mark to the 
applicant would justify the opposer’s belief that he would be 
damaged thereby. 




34 Trade-Marks. 


Notices of opposition to be effective must be filed within thirty 
days after the date of publication of the mark sought to be regis¬ 
tered in the Official Gazette. 

Munn & Co. practice exclusively before the Patent Office, 
and therefore all' litigation arising in the office of 
Legal Causes Munn & Co., such as suits for infringement of pat¬ 
ents, trade-marks and copyrights, unfair business 
competition, the preparation of assignments, licenses and con¬ 
tracts, the formation of corporations, as well as validity and 
infringement opinions, are conducted by the law firm of Munn, 
Anderson & Munn, Woolworth Building, 233 Broadway, New York. 


MUNN & COMPANY 

Patent Attorneys 


Woolworth Building 
233 Broadway, 
New York, N. Y. 

Tower Building 
Chicago, III. 


625 F Street 
Washington, D. C. 

Hobart Building 
San Francisco, Cal. 


Van Nuys Building 
Los Angeles, Cal. 








































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